Appeal No. 1998-3012
Application 08/751,764
In re Skoll, 523 F.2d 1392, 1397-98, 187 USPQ 481, 484-85 (CCPA 1975), although this person
would have reached the same imaging elements by following the teachings of Vrancken alone. See
Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807, 10 USPQ2d 1843, 1845-
46 (Fed. Cir. 1989); In re Lemin, 332 F.2d 839, 841, 141 USPQ 814, 815-16 (CCPA 1964).
Accordingly, one of ordinary skill in this art following the combined teachings of Gardner and
Vrancken or of Vrancken alone would have reasonably arrived at the claimed imaging element
encompassed by appealed claims 1 and 7.
Accordingly, since a prima facie case of obviousness has been established over the applied
references by the examiner, we have again evaluated all of the evidence of obviousness and
nonobviousness based on the record as a whole, giving due consideration to the weight of appellants’
arguments advanced in their brief and reply brief. See generally, In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Johnson, 747 F.2d 1456, 1460, 223 USPQ 1260,
1263 (Fed. Cir. 1984); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
We have carefully considered all of appellants’ arguments. Contrary to appellants’ position, not
only does Vrancken disclose the image durability benefits of the combination of a cross-linkable
hydrophilic binder dispersant for hydrophobic thermoplastic particles, such as gelatin, with a heat
activated “hardening” or cross-linking agent, such as an aldehyde, but it does so in disclosing the same
kind of imaging elements that provide durable images as disclosed in Gardner. It is clear that gelatin is
specified in appealed claim 1 as a hydrophilic binder and contains reactive groups as specified in
appealed claim 7, and that the aldehydes formaldehyde and glyoxal are capable of cross-linking gelatin
under the influence of heat as specified in appealed claims 1 and 7. Thus, in viewing the evidence in
Gardner and Vrancken as a whole, the claimed imaging element as encompassed by appealed claims 1
and 7 would have been reasonably suggested to one of ordinary skill in this art by the combined
teachings thereof and by the teachings of Vrancken alone, and appellants in their brief and reply brief
have not relied on any evidence in the record which would patentably distinguishing the claimed
invention.
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of obviousness found in the combination of Gardner and Vrancken with
- 6 -
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007