Appeal No. 1997-0006
Application 08/409,946
1365-66 (Fed. Cir. 1997); In re Merck & Co., 800 F.2d 1091, 1099, 231 USPQ 375, 381 (Fed.
Cir. 1986); In re Longi, 759 F.2d 887, 897, 225 USPQ 645, 651-52 (Fed. Cir. 1985); In re Klosak,
455 F.2d 1077, 1080, 173 USPQ 14, 16 (CCPA 1972); In re D’Ancicco, 439 F.2d 1244, 1248,
169 USPQ 303, 306 (CCPA 1971). Thus, in the absence of evidence explaining the practical
significance of such results and that the results are unexpected even in view of the admitted knowledge
in the art, we find that the evidence as a whole is more indicative of obviousness than nonobviousness.
See, e.g., Geisler, supra; Merck, supra; In re Hoffmann, 556 F.2d 539, 541, 194 USPQ 126, 128
(CCPA 1977); Klosak, supra; In re Gershon, 372 F.2d 535, 537, 152 USPQ 602, 604 (CCPA
1967).
Accordingly, on this record, we must agree with the examiner that appellants have failed to
establish that the combined teachings of Tamura and Kobata, taken in light of the knowledge in the art
as admitted by appellants, would not have provided one of ordinary skill in this art with the suggestion
of and a reasonable expectation of success in using an X-form, unmetallized, ortho-cyano substituted
phthalocyanine pigment in the manner disclosed in the reference in preparing a photosensitive recording
layer that has the characteristics taught therein. In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438,
1442 (Fed. Cir. 1991), citing In re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529,
1531(Fed. Cir. 1988). Indeed, all that is required is a reasonable expectation of success, not absolute
predictability. Merck, 874 F.2d at 808, 10 USPQ2d at 1847; In re O’Farrell, 853 F.2d 894, 903-
04, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988).
Accordingly, based on our consideration of the totality of the record before us, we have weighed
the evidence of obviousness found in the combined teachings of Tamura and Kobata with appellants’
countervailing evidence of and argument for nonobviousness and conclude that the claimed invention
encompassed by appealed claims 1 through 11 and 14 through 19 would have been obvious as a matter
of law under 35 U.S.C. § 103.
The examiner’s decision is affirmed.
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