Appeal No. 2006-0585
Application No. 09/917,751
R substituents must be identical and are each a 4-
methoxycarbonybenzyl group. One of ordinary skill in the art
would appreciate this teaching and understand that they may not be
alkyl. That is both are required to be 4-methoxycarbonylbenzyl to
obtain the results of the invention. Cho et al on the contrary, teach
that the corresponding substituent both are alkyl and n must be 2.
We cannot agree with the appellants that these distinctions between the teachings of Liao
and Cho would have militated against combining the respective reference teachings in the
manner proposed by the examiner. As correctly indicated by the examiner (e.g., see page 7 of
the answer), the fact that one of Liao’s cyanine dyes corresponds to n=1 in the generic formula
whereas the cyanine dyes of Cho correspond to n=2 or more would have been recognized by an
artisan as relating to a difference involving wavelength absorption only. Therefore, this
distinction would not have discouraged the artisan from combining the cyanine dye structures of
Liao with the TCNQ complex of Cho in order to obtain the benefits taught by Cho as more fully
explained in the answer (e.g., see the paragraph bridging pages 4-5). For similar reasons, this
combination would not have been discouraged by the fact that the respective cyanine dyes of
Liao and Cho include different R substituents for the nitrogen atom.
In this later regard, the appellants argue that these R substituents for Liao’s cyanine dyes
must be identical and accordingly that it would not have been obvious to substitute an alkyl for
one of these R substituents on patentee’s trimethine indolenic cyanine dye (i.e., n=1) to obtain
the benefits of unsymmetry taught by Sato in accordance with the examiner’s rejection. This is
incorrect. While Liao’s aforementioned R substituents are disclosed as being identical, this
reference contains no teachings or suggestion in support of the appellants’ contention that “the R
substituents must be identical and this is necessary to obtain the results of the invention” (brief,
page 5). Therefore, we fully agree with the examiner’s conclusion that an artisan would have
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