Appeal No. 1997-3781 Page 4
Application No. 08/275,204
successful result. However, neither Clarke nor Aoki gives any indication of which parameters are
critical for the selection of other coupler/developing agent combinations nor any direction as to which of
many possible choices is likely to be successful. Under such circumstances, it may be obvious to try
the coupler/developing agent combination of the claims, but there is no reasonable expectation of
success that any one particular combination different from the combinations disclosed in Clarke, will
result in a useful cyan, magenta or yellow dye. We particularly note that Aoki describes the 3-pyridinol
coupler as a cyan dye-forming coupler. Yet, according to Appellants specification, the 3-pyridinol
coupler and sulphonhydrazide developing agent combination yields a magneta dye (specification, page
2, line 5). This is evidence of the unpredictability of the dye forming reaction.
We conclude that the Examiner has failed to establish a prima facie case of obviousness with
respect to the subject matter of claims 2-9 and 11.
CONCLUSION
To summarize, the decision of the Examiner to reject claims 2-9 and 11 under 35 U.S.C.
§ 103 is reversed.
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