Ex parte Clarke et al.

Board of Patent Appeals and Interferences

Aug 24, 2001

08275204 (B.P.A.I. Aug. 24, 2001)

The opinion in support of the decision being entered today was not written for publication and
is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DAVID CLARKE AND PAUL L. R. STANLEY
____________
Appeal No. 1997-3781
Application No. 08/275,204
____________
ON BRIEF
____________
Before GARRIS, PAK, and TIMM, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the Examiner's final rejection of claims
2-9 and 11. Claim 10, the only other pending claim, was withdrawn pursuant to a restriction
requirement.
Appeal No. 1997-3781 Page 2
Application No. 08/275,204
BACKGROUND
Appellants’ invention relates to a color photographic material. Claim 11 is illustrative:
11. A color photographic material comprising at least two color-forming units sensitive to
different regions of the spectrum each comprising a silver halide emulsion layer wherein the material
contains in at least one said silver halide emulsion layer, a ballasted sulphonhydrazide color developing
agent and a 3-pyridinol photographic color coupler capable of forming a magenta dye upon coupling
with the oxidized form of said developing agent, both incorporated therein in droplets of a high boiling
solvent.
The prior art references of record relied upon by the Examiner in rejecting the appealed
claims are:
Aoki et al. (Aoki) 5,260,177 Nov. 9, 1993
Clarke et al. (Clarke) 5,284,739 Feb. 8, 1994

Claims 2-9 and 11 stand rejected under 35 U.S.C. § 103 as being unpatentable over Clarke in
view of Aoki. We reverse substantially for the reasons articulated in the Brief and add the following for
emphasis.
OPINION
Clarke, as correctly pointed out by the Examiner, describes the color photographic material of
claim 11 except for the specified 3-pyridinol photographic coupler (Answer, pages 3 and 4). The
Examiner also correctly points out that Aoki describes a photographic material including a 3-pyridinol
photographic coupler and that Aoki even exemplifies one of the couplers used in Appellants’ invention
Appeal No. 1997-3781 Page 3
Application No. 08/275,204
(Answer, page 4). What is missing is a suggestion, somewhere in the prior art, to use the 3-pyridinol
coupler with the ballasted sulphonhydrazide developing agent of Clarke and a reasonable expectation
that such a combination would result in a useful dye.
Appellants point out that oxidized developing agent and coupler reactively interact to form a
dye (Brief, page 3). The color obtained is dependent on the end product of the chemical reaction.
Therefore, if the composition of either the developing agent or coupler is changed, the reaction products
that result are likely to change as well. Appellants argue that those skilled in the photographic art
cannot predict whether a visible dye will be formed, or if one is formed, what color it will be, if either
the developing agent or coupler are altered (Brief, page 4). The Examiner has presented no persuasive
argument or evidence that the use of 3-pyridinol couplers with any developing agents other than the
aromatic primary amines mentioned in Aoki was known in the prior art or that one of ordinary skill in
the art would have had a reasonable expectation that a useful dye of any desired color would result
from the use of that coupler with a sulphonhydrazide developing agent.
The general disclosure must do more than lead one of ordinary skill in the art down the path of
investigation, it must contain a sufficient teaching of how to obtain the desired result or must indicate that
the claimed result would be obtained if certain directions were pursued. The Gillette Co. v. S.C.
Johnson & Son Inc., 919 F.2d 720, 725, 16 USPQ2d 1923, 1928 (Fed. Cir. 1990)(quoting In re Eli
Lilly & Co., 902 F.2d 943, 945, 14 USPQ2d 1741, 1743 (Fed. Cir. 1990)). Here, one of ordinary
skill in the art might have experimented with various different couplers until they possibly arrived at a
Appeal No. 1997-3781 Page 4
Application No. 08/275,204
successful result. However, neither Clarke nor Aoki gives any indication of which parameters are
critical for the selection of other coupler/developing agent combinations nor any direction as to which of
many possible choices is likely to be successful. Under such circumstances, it may be obvious to try
the coupler/developing agent combination of the claims, but there is no reasonable expectation of
success that any one particular combination different from the combinations disclosed in Clarke, will
result in a useful cyan, magenta or yellow dye. We particularly note that Aoki describes the 3-pyridinol
coupler as a cyan dye-forming coupler. Yet, according to Appellants specification, the 3-pyridinol
coupler and sulphonhydrazide developing agent combination yields a magneta dye (specification, page
2, line 5). This is evidence of the unpredictability of the dye forming reaction.
We conclude that the Examiner has failed to establish a prima facie case of obviousness with
respect to the subject matter of claims 2-9 and 11.
CONCLUSION
To summarize, the decision of the Examiner to reject claims 2-9 and 11 under 35 U.S.C.
§ 103 is reversed.
Appeal No. 1997-3781 Page 5
Application No. 08/275,204
No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR § 1.136(a).
REVERSED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CATHERINE TIMM )
Administrative Patent Judge )
CT/jg
Appeal No. 1997-3781 Page 6
Application No. 08/275,204
JOSHUA G. LEVITT
EASTMAN KODAK COMPANY
PATENT LEGAL STAFF
ROCHESTER, NY 14650-2201
JENINE GILLIS
APPEAL NO. 1997-3781 - JUDGE TIMM
APPLICATION NO. 08/275,204
APJ TIMM
APJ GARRIS
APJ PAK
DECISION: REVERSED
DRAFT TYPED: 16 Jul 02
FINAL TYPED:

3 MEM. CONF. Y N
OB/HD

GAU: 1700
PALM
ACTS 2
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DISK (FOIA)
REPORT