Appeal No. 1999-0106 5
Application No. 08/594,721
1444 (Fed. Cir. 1992). On the record before us, the examiner relies upon a reference
to Katz to reject the claimed subject matter and establish a prima facie case of
obviousness. The basic premise of the rejection is that, “[t]he issue of the obviousness is
the pH values, 9.5 in Katz (at col.5:19) as compared to 9.6 in the claims, for the reasons
that (A) the difference in the pH value is small, 0.1, which is within an obvious extension
or variation to one having ordinary skill in the art at the time the invention was made and
(B) there is no convincing evidence on the record that the use of the pH 9.6 as claimed
would provide an unusual or unexpected result over that of 9.5 in Katz.” See Answer,
page 4. We agree to the extent that the distinction in pH is the dispositive issue before
us. We disagree however, that the extension of pH is an obvious extension.
We find that Katz is directed to a developer composition comprising each of the
components required by the claimed subject matter. See Table 1, and Examples 1 and
3. We find that ascorbic acid is a preferred component of both appellants and Katz and
corresponds to a preferred compound within the scope of Formula I of the claimed
subject matter. Compare Examples 1 and 3 with the specification, page 5. The
disclosure in Katz of pH however, is very specific. We find that Katz discloses a
developer composition “adjusted to the pH range 8.0 to 9.5.” See column 2, lines 11-
12. We further find that Katz described the invention, “in its broadest form, provides an
alkaline developer composition, pH 8 to 9.5.” See column 2, lines 48-49. See also
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