Appeal No. 1999-2505 Page 5
Application No. 08/886,635
discloses merely that “[i]f there is no compatibility between the two layers there will be no
migration.” Nor does Fan suggest overcoming the effect of oxygen exposure by using longer
exposure or higher intensity. What Fan discloses is that “[t]he polymerization reactions require
longer exposure times or higher intensity radiation sources, and the results are less reproducible
when oxygen is present.” (Fan at col. 4, ll. 27-29).
As we said in our Decision in the parent application:
Throughout Fan, the photosensitive element is characterized as including
a barrier layer. See col. 2, lines 13-31; col. 2, lines 55-58; col. 4, lines 11-13,
the examples, and claim 1. Fan never describes the barrier layer as optional.
Furthermore, according to Fan, the barrier layer serves two important functions.
It minimizes the migration of materials between the photopolymerizable layer
and the infrared sensitive layer and it shields the photopolymerizable layer from
atmospheric oxygen (col. 4, lines 13-25).
Coming to the conclusion that Fan teaches or suggests eliminating the
barrier layer requires bridging several gaps in the path to the conclusion.
Bridging those gaps requires knowledge of Appellant’s solution. For instance,
the Examiner states that the description in col. 4, lines 22-23 that "[ i]f there is
no compatibility between the two layers there will be no migration" amounts to
a teaching that a barrier layer can be dispensed with if incompatibility exists
between the monomer and infrared layer (Answer, page 7). While the statement
linking compatibility between the layers and migration might lead one of
ordinary skill in the art down the path of investigation, it does not directly teach
how to obtain the desired incompatibility or indicate that the desired
incompatibility would be obtained if only the binder, an optional material in the
infrared sensitive layer of Fan, were selected to be incompatible with the
monomer in the photopolymerizable layer. The general disclosure must do more
than lead one of ordinary skill in the art down the path of investigation, it must
contain a sufficient teaching of how to obtain the desired result or must indicate
that the claimed result would be obtained if certain directions were pursued. See
The Gillette Co. v. S.C. Johnson & Son Inc., 919 F.2d 720, 725, 16 USPQ2d
1923, 1928 (Fed. Cir. 1990) (quoting In re Eli Lilly & Co., 902 F.2d 943, 945,
14 USPQ2d 1741, 1743 (Fed. Cir. 1990)).
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