Appeal No. 1997-0006
Application 08/409,946
photosensitive recording layers with the disclosed characteristics would not be obtained with any of the
disclosed crystalline forms. See Merck, 874 F.2d at 808, 10 USPQ2d at 1846. Indeed, it has long
been settled that preferred embodiments are not controlling and all non-preferred or non-exemplified
embodiments of a reference must be considered for all that such embodiments would have reasonably
suggested to one of ordinary skill in this art. See, e.g., Merck, supra, quoting In re Lamberti, 545
F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976) (“[A]ll disclosures of the prior art, including
unpreferred embodiments, must be considered.”). We further note, in this respect, that claim 1, as we
have interpreted it above, encompasses the photoconductive layers reasonably suggested by Tamura to
one of ordinary skill in this art which contain at least some amount of an X-form, unmetallized, ortho-
cyano substituted phthalocyanine, either as a physical mixture or in a mixed crystal with any crystalline
form of an unmetallized, unsubstituted phthalocyanine, regardless of the presence of other crystalline
forms of unmetallized, ortho cyano-substituted phthalocyanine or other unmetallized, substituted
phthalocyanine.
In considering the evidence in the specification urged by appellants to patentably distinguish the
photosensitive recording layers containing the X-form of the phthalocyanine pigment as specified in
claim 1 and such layers containing other crystalline forms of the same pigment, isomers thereof, and
other substituted analogs as well as the X-form, unmetallized, unsubstituted phthalocyanine pigment, we
again note that appellants have acknowledged in their specification that “[p]hthalocyanine pigments in
the morphological X-form have a broadened spectral sensitivity range in comparison with á- or â- form
(see Fig. 1) and offer an improved photosensitivity,” citing a commercial “X-metal-free phthalocyanine”
(see supra pp. 4-5). Thus, on this record, it would reasonably appear that the differences stressed by
appellants are no more than the difference that one of ordinary skill in the art armed with the knowledge
in the art would reasonably expect to observe between the X-form and other crystalline forms known in
the art. Appellants have provided no evidence that the data in their specification is of practical
significance and indeed unexpected. It is well settled that the burden of establishing the significance of
data in the record with respect to unexpected results rests with appellants, which burden is not carried
by mere arguments of counsel. See, e.g., In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362,
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