Appeal No. 1999-1005
Application No. 08/739,157
the appellants’ own disclosure. W.L. Gore & Assocs. v. Garlock,
Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983),
cert. denied 469 U.S. 851 (1984).
It follows that the examiner has failed to carry his initial
burden of establishing a prima facie case of unpatentability with
respect to the Section 102 and Section 103 rejections based on
DeBoer as the primary reference. As a consequence, we cannot
sustain any of these rejections.
Concerning the Section 103 rejection based on the Japanese
reference in view of Stewart, the examiner concludes that:
It would have been obvious to one skilled in the art to add
other pigments, such as yellow, which absorb in the blue to
improve the light absorbing qualities in this region of
spectrum of JP 61-206691 [i.e., the Japanese reference], or
to use a combination of cyan, magenta, and blue pigments to
form a black layer based upon the teaching by Stewart . . .
that these coatings are able to provide masking elements,
with a reasonable expectation [of] success in changing the
absorptivity of the image without affecting the function of
the ablative medium. [Answer, page 10.]
It does not appear to us that the examiner has provided an
adequate factual basis for supporting his conclusion that one
with ordinary skill in the art would have been motivated, based
upon a reasonable expectation of success, to modify the Japanese
reference teachings in the proposed manner. In addition, it is
significant that the examiner has not contested the appellants’
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