Appeal No. 1997-3361
Application No. 08/554,939
recording layer (i.e., to facilitate information exchange between
various users of the photographic material). Although the
processing bath used in Kojima ‘272 is not the same as that used
in Kojima ‘370, one of ordinary skill in the art would have had a
reasonable expectation of success in applying the magnetic
recording layer of Kojima ‘272 to the color photographic material
of Kojima ‘370. In re O’Farrell, 853 F.2d 894, 903, 7 USPQ2d
1673, 1681 (Fed. Cir. 1988) ( “Obviousness does not require
absolute predictability of success. ”).
Where, as here, the examiner has established a prima facie
case of obviousness, the burden of proof shifts to the appellants
to rebut the prima facie case by convincing argument or evidence
(e.g., unexpected results). In re Mayne, 104 F.3d 1339, 1343,
41 USPQ2d 1451, 1455 (Fed. Cir. 1997) ( “With a factual foundation
for its prima facie case of obviousness shown, the burden shifts
to applicants to demonstrate that their claimed fusion proteins
possess an unexpected property over the prior art. ”). The
question as to whether unexpected advantages have been
demonstrated is a factual question. Id. (citing In re Johnson,
747 F.2d 1456, 1460, 223 USPQ 1260, 1263 (Fed. Cir. 1984)).
Thus, it is incumbent upon the appellants to supply the factual
basis to rebut the prima facie case of obviousness established
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