Appeal No. 1997-3646 Page 8
Application No. 08/172,521
the separate list of charge transport materials (CTMS) set
forth
at pages 26-34a thereof. The examiner has not adequately
explained, nor do we find, that either of the applied
references, alone or in combination, teaches or suggests that
the properties of only select hydroxy containing arylalkane
compounds of Takei are such that they would serve as a ready
substitute for the CTM materials taught by Lindblad for use in
the overcoat layer.
In order for a prima facie case of obviousness of the
claimed invention to be established, the prior art as applied
must be such that it would have provided one of ordinary skill
in the art with both a suggestion to carry out appellants'
claimed invention and a reasonable expectation of success in
doing so. See In re Dow Chemical Co., 837 F.2d 469, 473, 5
USPQ2d 1529,
1531 (Fed. Cir. 1988). "Both the suggestion and the
expectation of success must be founded in the prior art, not
in the applicant's disclosure." Id.
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