Appeal No. 3-1969
Application 09/690,731
now claimed invention, not including such broader disclosure,” relying on the authority of In re
Ruff, 256 F.2d 590, 118 USPQ 340 (CCPA 1958) (brief, page 5; see also reply brief, page 3).
The examiner responds that the disclosure of alizarin establishes that appellants’
“assertion based on no change in the color has no probative value since . . . alizarin changes color
in [Kondo], and it would change color in the instant composition due to the same composition,”
and that “many of the instant coloring matters are known to the pH indicators as evidenced by the
secondary references” (answer, page 5; emphasis in original deleted).
We agree with appellants’ position. Even assuming that the secondary references
establish that the dyes encompassed by appealed claim 4 that the examiner points to therein (see
answer, page 4, fourth full paragraph) are in fact pH sensitive dyes, there still must be some basis
for combining such disclosures with the teachings of Kondo. In other words, there must be some
suggestion, motivation or knowledge in the prior art applied by the examiner that would have led
one of ordinary skill in this art to combine such teachings in the reasonable expectation of
obtaining a color-changeable cement composition which has the properties taught by Kondo. See
generally, In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433-34 (Fed. Cir. 2002);
Smith Industries Medical Systems, Inc. v. Vital Signs, Inc., 183 F.3d 1347, 1356, 51 USPQ2d
1415, 1420-21 (Fed. Cir. 1999); In re Rouffet, 149 F.3d 1350, 1358, 47 USPQ2d 1453, 1458
(Fed. Cir. 1998); In re Mayne, 1043 F.3d 1339, 1342, 41 USPQ2d 1451, 1454 (Fed. Cir. 1997);
ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 9292, 933 (Fed. Cir.
1984); In re Keller, 642 F.2d 413, 425-26, 208 USPQ 871, 881-82 (CCPA 1981).
We find that Kondo teaches that “[g]enerally, the pH of a mixed dental cement slurry
changes from acidic to neutral according to its setting process” and “the color-changeable
substances have a discoloring characteristic at a pH or 7 or less” (col. 3, lines 19-23). Kondo
discloses that the glass ionomer cement composition must be “highly aesthetic after setting” and
the “addition of a color-changeable substance thereto gives rise to no appreciable influence on
the color of the cement after setting” (col. 1, lines 50-64, and col. 2, lines 4-8).
The examiner has not identified any teaching in any of the secondary references which
would have suggested or motivated one of ordinary skill in the art to use the dyes identified
therein in the dental glass ionomer cements taught by Kondo. The only teachings in this respect
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