Appeal No. 2001-0729
Application No. 09/013,091
Ohzeki’s invention relates to silver halide emulsions for
reducing development and fixing time, as well as achieving low
pollution. Ohzeki, column 1, lines 9-12. In contrast, Asami’s
invention is directed to a color photographic material that can
provide a color print which is resistant to damage by pressure
and to a method for forming a color image. Asami, column 1,
lines 5-9. Although the examiner is correct that obviousness
does not require that references be combined for the reasons
contemplated by the inventor (answer, page 8) the examiner must
still establish that the prior art as a whole provides some
motivation or suggestion to combine the references. See In re
Kronig, 539 F.2d 1300, 1304, 190 USPQ 425, 427-28 (CCPA 1976).
The examiner has failed to establish why one of ordinary skill in
the art would have been motivated to combine Asami and Ohzeki
given the fact that they are directed to solving different prior
art problems. Moreover, as pointed out by appellants, Ohzeki
discloses a tabular silver halide grain while Asami utilizes a
cubic grain. See appeal brief, page 6. Contrary to the
examiner’s contention, the burden is on the examiner, not on
appellants, to establish that tabular and cubic grains would be
expected to interact with sensitizers in the same manner. See
examiner’s answer, page 7 (“there is no evidence on the record
7
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