Appeal No. 1998-1672
Application No. 08/708,163
The examiner rebuts and states that the showings on
pages 17-20 of the specification are insufficient to
overcome the Fujimoto reference. The examiner’s reasons
for his conclusion are set forth on pages 6 and 7 of the
Answer.
Appellant argues on page 3 of his Reply Brief that the
examiner, for the first time, argues the inadequacy of the
data on pages 17-20 of the specification. Appellant also
argues that most of the ingredients (listed on page 17 in
Table I of the specification) are common addenda for color
developing solution and are not the basis for
patentability.
It is well settled that a prima facie case of
obviousness is established by showing that some objective
teaching of suggestion in the applied prior art taken as a
whole and/or knowledge generally available to one of
ordinary skill in the art would have led that person to the
claimed invention as a whole, including each and every
limitation of the claims, without recourse to the teachings
appellant’s disclosure. See generally, In re Oetiker, 977
F.2d 1443, 1447-48, 24 USPQ2d 1443, 1446-47 (Fed. Cir.
1992)(Nies, J., concurring); In re Laskowski, 871 F.2d 115,
117, 10 USPQ3d 1397, 1389-99 (Fed. Cir. 1989); In re Fine,
837 F.2d 1071, 1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir.
1988); In re Geiger, 815 F.2d 686, 688, 2 USPQ2d 1276, 1278
(Fed. Cir. 1987).
Based upon the objective teachings set forth in
Fujimoto, we agree with the examiner’s conclusion of
obviousness. That is, we find that the Fujimoto reference
would have led the skilled artisan to appellant’s claimed
invention without undue experimentation. Afterall,
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