Appeal No. 1999-2529
Application 08/915,683
combinations of different sensitizers which can be used in combination with a gold sensitizer as
shown by each of the applied references discussed above, we find that the comparisons involving
one gold sensitizer as the sole sensitizer for the core does not provide a reasonable basis on
which to reliably predict the behavior of claimed emulsions that would routinely be prepared by
one of ordinary skill in this art following the teachings of the references vis-à-vis other gold
sensitizers alone or in combination with other sensitizers encompassed by claim 1. See, e.g., In
re Clemens, 622 F.2d 1029, 1035-36, 206 USPQ 289, 295-96 (CCPA 1980); In re Greenfield,
571 F.2d 1185, 1189, 197 USPQ 227, 230 (CCPA 1978); Lindner, supra.
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of obviousness found in the combined teachings of Evans, Tanemura and
Shuto with appellants’ countervailing evidence of and argument for nonobviousness and
conclude that the claimed invention encompassed by appealed claims 1 and 5 through 9 would
have been obvious as a matter of law under 35 U.S.C. § 103(a).
The examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR § 1.136(a).
AFFIRMED
- 12 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007