Appeal No. 2004-1835 Page 2
Application No. 09/919,118
Formula (I) and Formula (II)) as claimed, was the relevant question on appeal (Request, p. 1).
Claim 1 requires a separation of at least 10% . While neither Vandenbroucke nor Hendricks
expressly suggests a 10% separation, we agreed with the Examiner’s determination of obviousness
because, “as evidenced by Vandenbroucke and Hendricks, those of ordinary skill in the art
recognized that the location of the dopants affects various properties of the emulsion and,
consequently, one of ordinary skill in the art would have performed routine experimentation to
optimize the locations of the two dopants.” (Decision, p. 4). Appellants’ basic argument is that the
evidence is insufficient to establish a reason, suggestion, or motivation within the prior art for
separating the dopants as claimed (Request, pp. 1-3). Appellants acknowledge that one of ordinary
skill in the art might have a reasonable expectation of obtaining an emulsion with “useful
photographic properties” when separating the dopants as claimed, but Appellants state that such a
reasonable expectation is not enough to establish a case of prima facie obviousness (Request, p. 3).
Appellants have not convinced us of an error in our Decision. The “suggestion” here comes
from the general discussion of the placement of the dopants and how they affect speed and contrast
in the emulsion. Placement at a 10% separation would be expected to result in predictable results
and emulsions with useful speed and contrast properties. “Patentability is not imparted where ‘the
prior art would have suggested to one of ordinary skill in the art that this process should be carried
out and would have a reasonable likelihood of success, viewed in light of the prior art.’” Merck &
Co. v. Biocraft Labs., 874 F.2d 804, 809, 10 USPQ2d 1843, 1847 (Fed. Cir.), cert. denied, 493 U.S.
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