Appeal No. 1997-2271
Application 08/588,969
phenyl nucleus function to form a chelate (answer, pages 15-
16), but has not explained why the disclosures in Komamura
‘092, Bailey and
Komamura ‘422 of using an alkoxy group at the 2-position in
imaging systems which, as discussed above, are different from
that of Kovacs, would have fairly suggested, to one of
ordinary skill in the art, the desirability of substituting an
alkoxy group for the oxygen atom at the 2-position of the
phenyl nucleus of Kovacs’ dye.
The examiner, therefore, has not carried the burden of
establishing a prima facie case of obviousness. Consequently,
we reverse the examiner’s rejection.
Since no prima facie case of obviousness has been
established, we need not address the experimental results.
See
In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed.
Cir. 1984); In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143,
147 (CCPA 1976).
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