Appeal No. 1997-0666
Application 08/338,830
specific basic groups set forth in appealed claim 12, i.e., the Formula 1 and Formula 2 groups.
This is consistent with appellants' construction of the claims as evident from their description of
the invention in the Brief at page 3 wherein they argue that an essential feature of the invention
is the use of a deflocculating agent which is a basic CuPc containing up to four basic groups
selected from the formulas in question.
Further, respecting the issue regarding appellants' claimed component (b)
deflocculating agents, the examiner contends that the prior art reference to Leister “suggests
the genus of the deflocculating agents to which the instant deflocculating agents belong.” See
the Answer at pages 9 and 10. However, the fact that a claimed species or subgenus is
encompassed by prior art genus is not sufficient by itself to establish a prima facie case of
obviousness.
The examiner has also contended that the “instant deflocculating agents were
notoriously well-known in the art for preventing flocculation of CuPc pigments.” See the Answer
at page 5. It is not uncommon that the rationale supporting an obviousness rejection is based
on either common knowledge in the art or “well-known” prior art. As set forth in the MPEP §
2144.03, (6th ed., Rev. 2, July 1196; 2100-115), an examiner may take official notice of facts
outside the record so long as such facts are capable of “instant and unquestionable
demonstration” as being “well-known” in the art. Having been challenged by appellants in this
prosecution to provide factual support for his contention that appellants' specifically claimed
deflocculating agents are notoriously well known in the art, the examiner's failure to provide
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