Appeal No. 2003-0615
Application No. 09/319,165
The oxidation dye combinations which Yamahatsu would have
fairly suggested to one of ordinary skill in the art, however,
are not limited to those in the examples. See In re Fracalossi,
681 F.2d 792, 794 n.1, 215 USPQ 569, 570 n.1 (CCPA 1982); In re
Mills, 470 F.2d 649, 651, 176 USPQ 196, 198 (CCPA 1972).
Yamahatsu’s teaching that all of the disclosed oxidation dyes are
suitable, and the indication in the examples that the oxidation
dyes are useful in combination, would have fairly suggested, to
one of ordinary skill in the art, use of any combination of the
disclosed oxidation dyes.5 The fact that many combinations of
the disclosed oxidation dyes are possible would not have made any
of them less obvious, particularly where, as here, the oxidation
dyes recited in the appellants’ claim are used for the identical
purpose taught by the reference. See Merck & Co. v. Biocraft
5 The appellants argue that according to this reasoning, no
composition containing any combination of Yamahatsu’s oxidation
dyes would be patentable because they all would be obvious
variants of each other (reply brief, pages 5-6). All of the
combinations would have been prima facie obvious to one of
ordinary skill in the art. A showing of prima facie obviousness
can be overcome by evidence of secondary considerations, but the
appellants have not provided such evidence. See In re Piasecki,
745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); In re De
Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984); In
re Reuter, 651 F.2d 751, 757, 210 USPQ 249, 254-5 (CCPA 1981); In
re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976).
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