Appeal No. 2005-1485
Application No. 10/317,040
claimed invention which combines several elements, “the question is
whether there is something in the prior art as a whole to suggest
the desirability, and thus the obviousness, of making the
combination. [Citation omitted].” Rouffett, 149 F.3d at 1356, 47
USPQ at 1456.
Here, even assuming Nagasawa is from an analogous art, the
examiner has not identified any teaching, suggestion or motivation
to employ a plate made of color-producing metals or metal oxides in
the cut gemstone coloring method described in Pollack. As
correctly pointed out by the appellants (Brief, page 5), Nagasawa
only teaches diffusing an acceptor impurity, such as aluminum, in
powder form or plate form into a stannic oxide slab for the purpose
of making a photoconductive laminal region. Nothing in Ngasawa
indicates that diffusing an acceptor impurity in the form of a
plate into a stannic oxide slab for the purpose of producing a
photoconductive laminal region is suitable, much less desirable,
for effectively coloring cut gemstones.1 Thus, on this record, we
are constrained to agree with the appellants that the examiner has
not demonstrated that “the prior art as a whole” would have
1 The examiner relies on Hazelrigg drawn to an electrolytic
cell anode structure and Gibson drawn to a garlic press to show
the features recited in dependent claims only.
4
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