Appeal No. 2004-1835 Page 6
Application No. 09/919,118
does not convince us that each and every one of the myriad of dopant combinations exhibit the
unexpected LIK performance relied upon by Appellants. Nor does the fact that the comparison is
made to the “closest prior art” (Hendricks, samples 3-5) somehow lower the burden. The prior art
renders obvious more than just the one combination of dopants exemplified in samples 3-5 of
Hendricks, Hendricks generally describes the use of dopants from the two classes of dopants
together (Hendricks, col. 6, l. 59 to col. 8, l. 7).
The Rejection of Claims 23-27
Appellants argue that they presented additional arguments specific to the limitations set
forth in claims 23-27. But the argument is that the problem of LIK performance has surprisingly
been found to be especially noticeable for laser exposures and surprisingly improved by a greater
level for laser exposures of emulsion in accordance with the invention. As we explained in our
Decision, however, a prima facie case of obviousness does not require that the applied prior art
recognize and address the specific problem upon which the inventor was working (Decision, p. 5).
While we made that statement in addressing the rejection of claims 1-22, it applies here as well.
The subject request has been granted to the extent that our decision has been reconsidered,
but is denied with respect to making any changes therein.
No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR § 1.136(a)(1)(iv)(effective Sep. 13, 2004; 69 Fed. Reg. 49960 (Aug. 12,
2004); 1286 Off. Gaz. Pat. Office 21 (Sep. 7, 2004)).
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