Appeal No. 1997-3649 Page 7
Application No. 08/432,450
Coming to the conclusion that Fan teaches or suggests eliminating the barrier layer requires
bridging several gaps in the path to the conclusion. Bridging those gaps requires knowledge of
Appellant’s solution. For instance, the Examiner states that the description in
col. 4, lines 22-23 that "[ i]f there is no compatibility between the two layers there will be no migration"
amounts to a teaching that a barrier layer can be dispensed with if incompatibility exists between the
monomer and infrared layer (Answer, page 7). While the statement linking compatibility between the
layers and migration might lead one of ordinary skill in the art down the path of investigation, it does not
directly teach how to obtain the desired incompatibility or indicate that the desired incompatibility would
be obtained if only the binder, an optional material in the infrared sensitive layer of Fan, were selected
to be incompatible with the monomer in the photopolymerizable layer. The general disclosure must do
more than lead one of ordinary skill in the art down the path of investigation, it must contain a sufficient
teaching of how to obtain the desired result or must indicate that the claimed result would be obtained if
certain directions were pursued. See The Gillette Co. v. S.C. Johnson & Son Inc., 919 F.2d 720,
725, 16 USPQ2d 1923, 1928 (Fed. Cir. 1990) (quoting In re Eli Lilly & Co., 902 F.2d 943, 945, 14
USPQ2d 1741, 1743 (Fed. Cir. 1990)).
Furthermore, even if it were obvious to do all the picking and choosing necessary to result in a
photopolymerizable barrier layer containing a monomer and an infrared sensitive layer with incompatible
binder, there would still be the problem of shielding the photopolymerizable layer from atmospheric
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