Appeal No. 2004-1835 Page 3
Application No. 09/919,118
975 (1989)(quoting In re Dow Chemical Co ., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir.
1988)).
Appellants’ statement that the “routine experimentation” with respect to selection of dopant
locations in order to optimize the speed and contrast properties discussed in the prior art would not
necessarily lead to the required separation of dopants (Request, p. 2) misses the point. A prima
facie case of obviousness does not require absolute certainty that the result will occur, what is
required is a level of evidence showing a suggestion to do what is claimed with a reasonable
expectation of success. Here there is a general suggestion to use the dopants together and to
separate them with a reasonable expectation that an emulsion with adequate speed and contrast will
result.
That Hendricks includes examples with a lesser (5%) separation of dopants is not evidence
that Hendricks fails to suggest the claimed separation. The examples are just that, examples. It is
the prior art as a whole which must be considered. Nor can we agree that the comparative data in
the examples of the present application (Table 1, p. 29) support a conclusion of non-obviousness
under the current facts. That the differences between the results for the dopant combination of I-2
at the 75-80% location and II-1 at the 5-70% and 5-25% locations (5% dopant separation versus
50% dopant separation shown in Table 1 part #1.3 versus part #1.6) are not significant only serves
to indicate that each location is workable for that particular combination of I-2 and II-1 dopants.
One of ordinary skill in the art would understand that the workable or optimum locations would
vary with the specific dopant combination used. We emphasize that Hendricks generally teaches
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007