Appeal No. 1997-3781 Page 3
Application No. 08/275,204
(Answer, page 4). What is missing is a suggestion, somewhere in the prior art, to use the 3-pyridinol
coupler with the ballasted sulphonhydrazide developing agent of Clarke and a reasonable expectation
that such a combination would result in a useful dye.
Appellants point out that oxidized developing agent and coupler reactively interact to form a
dye (Brief, page 3). The color obtained is dependent on the end product of the chemical reaction.
Therefore, if the composition of either the developing agent or coupler is changed, the reaction products
that result are likely to change as well. Appellants argue that those skilled in the photographic art
cannot predict whether a visible dye will be formed, or if one is formed, what color it will be, if either
the developing agent or coupler are altered (Brief, page 4). The Examiner has presented no persuasive
argument or evidence that the use of 3-pyridinol couplers with any developing agents other than the
aromatic primary amines mentioned in Aoki was known in the prior art or that one of ordinary skill in
the art would have had a reasonable expectation that a useful dye of any desired color would result
from the use of that coupler with a sulphonhydrazide developing agent.
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. 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)). Here, one of ordinary
skill in the art might have experimented with various different couplers until they possibly arrived at a
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