Ex Parte Adam

Board of Patent Appeals and Interferences

Feb 25, 2005

10152877 (B.P.A.I. Feb. 25, 2005)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HENRY H. ADAM
____________
Appeal No. 2005-0532
Application No. 10/152,877
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ON BRIEF
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Before PAK, KRATZ and TIMM, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1, 2, 4, 5, 7 and 10, which are all of the
claims pending in this application.
BACKGROUND
Appellant's invention relates to a photographic material
that includes an opaque support having an image side and a
mordant and gelatin binder coated non-image side. Claim 1, the
sole independent claim on appeal, is reproduced below.
Appeal No. 2005-0532
Application No. 10/152,877
Page 2
1. A photographic material comprising an
opaque reflective support, said support
having an image side and a non-image side,
said non-image side being coated with a
mordant at a lay down of from 100 to 400
mg/square ft. to absorb during washing of the
photographic material dyes selected from
absorber dyes and sensitising dyes that would
contribute to staining of the final image,
together with a gelatin binder.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Yutzy et al. (Yutzy) 2,882,151 Apr. 14, 1959
Campbell et al. (Campbell) 3,958,995 May 25, 1976
Claims 1, 2, 4, 5, 7 and 10 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Yutzy in view of Campbell.
We refer to the brief and to the answer for a complete
exposition of the opposing viewpoints expressed by appellant and
the examiner concerning the issues before us on this appeal.
OPINION
Upon careful review of the respective positions advanced by
appellant and the examiner with respect to the rejection that is
before us for review, we find ourselves in agreement with
appellant’s viewpoint in that the examiner has failed to carry
the burden of establishing a prima facie case of obviousness.
See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
Appeal No. 2005-0532
Application No. 10/152,877
Page 3
(Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1471-1472, 223
USPQ 785, 787-788 (Fed. Cir. 1984). Accordingly, we will not
sustain the examiner’s rejection.
All of the claims on appeal require a photographic material
including a substrate having an image side and a mordant-coated
non-image side.
The examiner recognizes that Yutzy does not include a
mordant coating on any side of the opaque support thereof.
Rather, as illustrated in drawing Figure 1 of Yutzy, an opaque
support (10) includes a receiving layer (14) on one side thereof
and a light-sensitive layer (12) on the other side of the
support.
Campbell discloses a photographic element including a
support coated with a layer containing a silver halide emulsion
and an image-dye providing material and further including an
image-receiving layer including a polymeric dye-mordant.
According to the examiner, “it would be obvious to one skilled in
the art to use polymeric dye mordants, including those disclosed
in Campbell et al., in the receiving layers of Yutzy et al. to
prevent migration of the dye images formed in the receiving
layers of Yutzy et al.” (numbered paragraph 3 of office action
mailed April 11, 2003, as referred to at page 3 of the answer).
Appeal No. 2005-0532
Application No. 10/152,877
Page 4
Appellant, on the other hand, does not agree that one of
ordinary skill in the art would have been led to the examiner’s
proposed modification of Yutzy based on the applied references’
teachings so as to result in the claimed product. In this
regard, appellant essentially maintains that, even if a mordant
were added to the receiving layer of Yutzy as the examiner
proposes, the examiner’s proposed modification of Yutzy would
have resulted in a photographic element having a support with two
image sides, not a support with a non-image side coated with a
mordant, as appellant’s claim. In this regard, we note that
appellant maintains that Yutzy’s receiving layer coated side of
the support is not a non-image side, as here claimed, because
reactive materials for forming an image are part of the receiving
layer of Yutzy.
The examiner opposes that viewpoint by asserting that
(answer, page 5):
Yutzy et al. discloses materials comprising opaque
supports with silver halide emulsion layers on one side
of the support and receiving layers on the other side
of the support. If the materials in Yutzy et al. are
processed in the same manner as disclosed in
appellant’s specification, i.e., without rolling, then
the receiving layers on the back of the supports in
Yutzy et al. would not function as dye image receiving
layers but rather as scavenger layers for dyes in
processing solutions as in the processes disclosed in
appellant’s specification.
Appeal No. 2005-0532
Application No. 10/152,877
Page 5
However, the examiner also asserts that “one skilled in the
art would be motivated to use dye mordants, as in Campbell et
al., in the receiving layers of Yutzy et al. to prevent the
migration of dye images formed therein” (answer, page 6). In
other words, the examiner recognizes the receiving layer side of
the support of Yutzy as an image side of that support in
offering an explanation of the examiner’s position as to why one
of ordinary skill in the art would have been led to add a mordant
to Yutzy’s receiving layer based on Campbell’s teachings. Yet,
the examiner also argues that the receiving layer side of the
support of Yutzy could be a non-image side if processed
differently, albeit not in a way taught by Yutzy.
On this record, we can not agree with those positions of the
examiner. In this regard, Yutzy clearly discloses a photographic
material having an image side that is coated with light-sensitive
materials capable of forming a negative image and a second image
side (receiving side) that is coated with reactive materials
capable of forming a positive image. Here, the examiner has not
fairly explained how the here claimed non-image and image sides
of the support can be reasonably construed to read on the
photographic support element of Yutzy that includes two image
Appeal No. 2005-0532
Application No. 10/152,877
Page 6
1 We do not believe that Yutzy’s receiving layer side could
be considered as a non-image side of a support as that term is
used by appellant in their specification and claims.
forming sides. Nor has the examiner fairly explained why adding
a mordant to an alleged non-image side1 of the support of Yutzy
would have been suggested by the applied references given that
Campbell teaches employing such a mordant in an image receiving
layer, not a non-image side of a support. Concerning this
matter, we note that Campbell discloses that an image receiving
layer containing the mordants is formed on the same side of the
support as the silver halide emulsion layer or on an entirely
different support. See, e.g., column 10, lines 27-32 of
Campbell.
It is well settled that the mere fact that prior art may be
modified to reflect features of the claimed invention does not
make the modification obvious unless the desirability of such
modification is suggested by the prior art. Our reviewing court
has repeatedly cautioned against employing hindsight by using the
appellant’ disclosure as a blueprint to reconstruct the claimed
invention from the isolated teachings of the prior art. See,
e.g., Grain Processing Corp. v. American Maize-Products Co., 840
F.2d 902, 907, 5 USPQ2d 1788, 1792 (Fed. Cir. 1988).
Appeal No. 2005-0532
Application No. 10/152,877
Page 7
From our perspective, the examiner’s proposed combination of
Yutzy and Campbell appears to be premised on impermissible
hindsight reasoning. Thus, we will not sustain the stated §
103(a) rejection.
CONCLUSION
The decision of the examiner to reject claims 1, 2, 4, 5, 7
and 10 under 35 U.S.C. § 103(a) as being unpatentable over Yutzy
in view of Campbell is reversed.
REVERSED
CHUNG K. PAK )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PETER F. KRATZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CATHERINE TIMM )
Administrative Patent Judge )
PFK/sld
Appeal No. 2005-0532
Application No. 10/152,877
Page 8
PAUL A LEIPOLD
PATENT LEGAL STAFF
EASTMAN KODAK COMPANY
343 STATE STREET
ROCHESTER, NY 14650-2201