Claim 27 stands rejected under 35 U.S.C. § 103 as being unpatentable over each of Hopfenberg in view of Kamada
or Hopfenberg as modified by Kamada in view of Bugnon, each as applied to claims 12, 19, 22, 24 and 26 and further
in view of Loch.
OPINION
We have carefully considered all of the arguments advanced by appellants and the examiner and agree with
the appellant that the aforementioned rejections under 35 U.S.C. § 103 are not well founded. Accordingly, we will not
sustain any of the rejections.
The Rejections under Section 103 -- Obviousness
“[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima
facie case of unpatentability, ” whether on the grounds of anticipation or obviousness. See In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). In the case before us, the examiner relies upon five references in
multiple combinations, in five separate rejections to reject the claimed subject matter and establish a prima facie
case of obviousness.
All but one of the rejections rely on a reference to Bugnon, which is the sole reference directed to the claimed
diketopyrrolopyrroles. As to the rejection of Hopfenberg in view of Kamada, the examiner has stated that neither
Hopfenberg nor Kamada discloses the various diketo-pyrrolopyrrole pigments. See Answer, page 4. That omission
in and of itself constitutes reversible error. The mere possibility that the processes of Hopfenberg could be modified
such that the diketo-pyrrolopyrrole pigments recited in the claimed subject matter were substituted for the pigments
of Hopfenberg does not make the claimed processes obvious, absent a suggestion in the prior art of the desirability
of such a modification. The absence of that suggestion or motivation in and of itself is sufficient to conclude that no
prima facie case of obviousness had been established. See In re Ochai,71 F.3d 1565, 1569-1570, 37 USPQ2d 1127,
1131-1132 (Fed. Cir. 1995).
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