Appeal 2007-0410
Application 10/414,066
Burroughes for use in an organic luminescent layer of a device according to
Mori.
In this regard, the Examiner asserts that:
it would have been [prima facie]obvious for the artisan to have
combined the references, because, absent evidence otherwise,
“[i]t is prima facie obvious to combine two compositions taught
by the prior art as useful for the same purpose, in order to form
a third composition which is to be used for the very same
purpose” (see In re Kerkhoven, 205 USPQ 1069, 1072 (CCPA
1980); In re Susi, 169 USPQ 423, 426 (CCPA 1971); In re
Crockett, 126 USPQ 186, 188 (CCPA 1960)).
Answer 5.
However, the Examiner’s reliance on the cited case law, including
In re Kerkoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980), is
misplaced as asserted by Appellants in the Brief (Br. 11-15). This is so
because the Examiner has not articulated why one of ordinary skill in the art
would discount the teachings of Mori as to using oxidation potential and
reduction potential criteria for selecting materials to be part of the
luminescent layer thereof based on the asserted legal presumption of the
obviousness of mixing components used for the same purpose together that
is generalized from the cited case law. After all, it is well established that
the examiner has the initial burden of demonstrating that the teachings of the
cited prior art would have suggested to one of ordinary skill that the claimed
composition should be made, and that such a person would have a
reasonable expectation of success in so doing. See In re O'Farrell, 853 F.2d
894, 903-904, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988). This suggestion must
come from the prior art, not Applicants’ disclosure. See In re Dow Chemical
Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1532 (Fed. Cir. 1988).
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