Appeal No. 2004-1951
Application No. 10/025,684
pigment of Andes as a filler in the laser marking composition of
JP ‘291.
Since JP ‘291 is directed to a very specific combination of
carbon black and antimony trioxide in an epoxy resin composition,
we must agree with appellants that the examiner has not
established the requisite reasonable expectation of success for
adding a nacreous pigment into the composition of JP ‘291. The
examiner fails to point to any teaching in JP ‘291 that allows
for the incorporation of other pigments into the composition.
The examiner explains that “Ande’s suggestion to use the
pigment/s for laser-making [sic. laser-marking] should surely
serve as an appropriate direction to a person of ordinary skill
in the art to use the pigment in a laser-making [sic. laser-
marking] composition with the possibility that one can obtain
better product/s using such pigment/s” (page 4 of answer, last
paragraph, emphasis added). Manifestly, the “possibility” of
success is not the test for establishing obviousness under
35 U.S.C. § 103. The examiner seems to be applying the verboten
obvious-to-try standard.
One final point remains. Upon return of this application to
the examiner, the examiner should consider the obviousness of
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