Ex Parte Fukui

Board of Patent Appeals and Interferences

Mar 30, 2007

10730143 (B.P.A.I. Mar. 30, 2007)

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for publication and is not binding precedent of the Board.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 KOUTA FUKUI
__________

Appeal 2007-0218
Application 10/730,143
Technology Center 1700
__________

ON BRIEF
__________

Before SCHEINER, ADAMS, and GRIMES, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
photothermographic material. The Examiner has rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
BACKGROUND
The specification describes “a photothermographic material
comprising a photosensitive silver halide, a non-photosensitive organic silver
salt, a reducing agent, and a binder on at least one surface of a support”
(Specification 5). The specification states that the photosensitive silver
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Application No. 10/730,143

halide contains silver iodide “in an amount of 40 % to 100 % by mole” (id.),
that “the reducing agent contains a compound represented by . . . formula (R-
1)” (id. at 5-6), and that the “reducing agent may further contain a compound
represented by formula (R-2) or (R-3)” (id. at 13). Formulas (R-1), (R-2),
and (R-3) each represent a 2,4-dialkyl substituted orthobisphenol (see
Suzuki,1 col. 15, ll. 35-55).
DISCUSSION
1. CLAIMS
Claims 1-5 and 8-10 are pending and on appeal. The claims subject to
each rejection have not been argued separately and therefore stand or fall
together. 37 C.F.R. § 41.37(c)(1)(vii). We will focus on claims 1 and 2,
which are representative and read as follows:
1. A photothermographic material comprising a photosensitive silver
halide, a non-photosensitive organic silver salt, a reducing agent, and a
binder on at least one surface of a support, wherein silver iodide is contained
in the photosensitive silver halide in an amount of 40 % to 100 % by mole,
and the reducing agent contains a compound represented by the following
formula (R-1):

Formula (R-1)

1 Suzuki et al., U.S. Patent No. 4,211,839, issued July 8, 1980.
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wherein R1 and R1' each independently represent an alkyl group having 3 to
20 carbon atoms, in which a carbon atom bonding to the benzene ring is
secondary or tertiary; R2 and R2' each represent a methyl group; L represents
an -S- group or a -CHR3- group, in which R3 represents a hydrogen atom or
an alkyl group having 1 to 20 carbon atoms; and X1 and X1' each
independently represent a hydrogen atom or a group capable of being
substituted on the benzene ring; and
the reducing agent includes a second compound selected from formula
(R-2) or from formula (R-3)

Formula (R-2)

wherein R11 and R11' each independently represent an alkyl group having 3 to
20 carbon atoms, in which a carbon atom bonding to the benzene ring is
secondary or tertiary; R12 and R12' each independently represent an alkyl
group having 2 to 20 carbon atoms; L represents an -S- group or a -CHR13-
group, in which R13 represents a hydrogen atom or an alkyl group having 1
to 20 carbon atoms; and X11 and X11' each independently represent a
hydrogen atom or a group capable of being substituted on the benzene ring;

Formula (R-3)

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Application No. 10/730,143

wherein R21 and R21' each independently represent a methyl group or an
alkyl group having 2 to 20 carbon atoms, in which a carbon atom bonding to
the benzene ring is primary; R22 and R22' each independently represent an
alkyl group having 1 to 20 carbon atoms; L represents an -S- group or a
-CHR23- group, in which R23 represents a hydrogen atom or an alkyl group
having 1 to 20 carbon atoms; and X21 and X21' each independently represent
a hydrogen atom or a group capable of being substituted on the benzene
ring.

2. The photothermographic material of claim 1, further comprising a
compound represented by the following formula (H):

Formula (H)

Q-(Y)n-C(Z1)(Z2)X

wherein Q represents an alkyl group, an aryl group, or a heterocyclic group;
Y represents a divalent connecting group; n represents 0 or 1; Z1 and Z2 each
represent a halogen atom; and X represents a hydrogen atom or an electron
withdrawing group.

Thus, claim 1 is directed to a photothermographic material comprising
a photosensitive silver halide, a non-photosensitive organic silver salt, a
reducing agent, and a binder on a surface of a support. The photosensitive
silver halide contains 40-100 mole % silver iodide and the reducing agent
includes two compounds, a compound of formula (R-1) and a compound of
either formula (R-2) or formula (R-3).
Claim 2 depends from claim 1 and recites that the photothermographic
material also comprises a compound represented by formula (H).
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Application No. 10/730,143

2. OBVIOUSNESS REJECTION OF CLAIMS 1, 3-5, AND 8-10
Claims 1, 3-5, and 8-10 stand rejected under 35 U.S.C. § 103 as
obvious in view of Toya 126,2 Siga,3 Matsumoto,4 Suzuki, and Yoshioka.5
The Examiner argues that Toya 126 discloses a photothermographic material
containing a photosensitive silver halide (which can be all silver iodide or a
mixture containing up to 40 mol % silver iodide), a non-photosensitive
organic silver salt, a binder, and a reducing agent that can be a bisphenol.
(Answer 3.)
The Examiner cites Siga for its disclosure that using at least 30
mole %, preferably at least 50 mole % silver iodide in the silver halide
component provides a “dry image forming material excellent enough in both
stability and sensitivity.” (Id. at 3.)
The Examiner cites Suzuki for its teaching that using “two or more
polyphenolic reducing agent[s] having alkyl group[s] at the two substitution
position[s] adjacent to the hydroxyl-substituted position of the aromatic
nucleus is effective for preventing discoloration upon exposure to light.”
(Id. at 4.) The Examiner also relies on Yoshioka for disclosing use of more
than one phenol compounds as reducing agents and teaching that “ortho-
phenol compounds are preferred because of their high heat-developability.”
(Id. at 7-8 (emphasis in original).) Finally, the Examiner argues that the
Yoshioka’s formula (1) encompasses “compounds of formula R-1, R-2 and

2 Toya et al., U.S. Patent No. 5,998,126, issued December 7, 1999.
3 Siga et al., U.S. Patent No. 4,332,889, issued June 1, 1982.
4 Matsumoto et al., U.S. Patent No. 5,958,668, issued September 28, 1999.
5 Yoshioka et al., European Patent Application No. EP 1 096 310 A2,
published May 2, 2001.
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R-3” and that Yoshioka discloses specific compounds within formulas R-1,
R-2, and R-3. (Id. at 8-9.) The Examiner concludes that the cited references
would have made the product of claim 1 obvious to a person of ordinary
skill in the art.
We conclude that the Examiner has set forth a prima facie case of
obviousness. In particular, Toya 126 describes a photothermographic
material comprising a photosensitive silver halide, an organic silver salt, a
reducing agent for the organic silver salt, and a binder on a surface of a
support (col. 1, ll. 38-40; col. 18, ll. 1-24; col. 21, ll. 41-47; col. 24, l. 61).
Toya 126 states that the silver halide can be silver iodide or silver
iodobromide (col. 16, ll. 50-53), thus teaching embodiments in which all or
only a portion of the silver halide is silver iodide. In addition, Toya 126
teaches that silver iodobromide having a silver iodide content of 0.1 to 40
mole % is most preferred (col. 16, ll. 55-56). This preferred range overlaps
the range recited in claim 1 at 40 mole %.
Siga describes an image forming material comprising a silver halide
including silver iodide, an organic silver salt, a reducing agent, and a binder
(col. 3, l. 60 to col. 4, l. 5). Siga states that this composition provides
improved stability and sensitivity (col. 4, ll. 46-49). Siga also states that,
“for the silver iodide to exert a sufficient effect,” it is preferably included in
an amount of at least 30 mole %, more preferably at least 50 mole %, based
on the silver halide component (col. 6, ll. 43-50). Based on the teachings in
Toya 126 and Siga, we agree with the Examiner that it would have been
obvious to include, in the composition of Toya 126, silver iodide in an
amount of at least 40 mole %, as recited in claim 1.
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Claim 1 also requires that the product include a reducing agent
comprising a compound represented by formula (R-1) and a compound
represented by either formula (R-2) or (R-3). We agree with the Examiner
that the cited references would have made this limitation obvious as well.
Toya 126 teaches that the exemplary reducing agents include
bisphenols (col. 21, l. 55, to col. 22, l. 25). Suzuki also describes reducing
agents for an organic silver salt in the presence of silver halide (col. 10, ll.
53-56), states that “reducing agents may be used as combinations of two or
more” (col. 16, ll. 35-36), and states that the “most preferred reducing agents
are 2,4-dialkyl substituted orthobisphenols, 2,6-dialkyl substituted
parabisphenols or mixtures thereof” (col. 15, ll. 35-38). Suzuki states that
reducing agents such as 2,4-dialkyl orthobisphenols are “effective for
preventing discoloration upon exposure to light” (col. 16, ll. 53-58). Based
on Suzuki, we agree with the Examiner that it would have been obvious to
include two 2,4-dialkyl substituted orthobisphenols as reducing agents in the
composition of Toya 126.
Yoshioka describes a photothermographic material comprising a
photosensitive silver halide, a non-photosensitive organic silver salt, a
reducing agent, and a binder, “wherein it contains one or more phenol
compounds as the reducing agent” (¶ 0008). Yoshioka teaches that the
phenol compound “is preferably an o-polyphenol compound, in particular, a
compound represented by the following formula (I):

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(¶ 0013), where R1, R3, R6 and R8 are “preferably a primary alkyl group
having 1-20 carbon atoms, a secondary alkyl group having 3-20 carbon
atoms, or a tertiary alkyl group having 4-20 carbon atoms” (¶ 0029).
Yoshioka teaches that such compounds are “preferred because of their
higher heat-developability” (¶ 0027).
Yoshioka discloses exemplary compounds within each of formulas
(R-1), (R-2), and (R-3) of claim 1: compounds (I-3) and (I-4) on page 7 of
Yoshioka are within formula (R-1), compound (I-12) on page 8 of Yoshioka
is within formula (R-2), and compound (I-10) on page 7 of Yoshioka is
within formula (R-3). Based on the teachings of Yoshikawa and Suzuki, we
agree with the Examiner that a skilled artisan would have found it obvious to
include two compounds within formula (I) of Yoshikawa, including a
compound of formula (R-1) and a compound of either formula (R-2) or
(R-3), as reducing agents in the composition of Toya 126.
Appellant argues that “none of the cited references teach or suggest
the use of two different orthobisphenol reducing agents in combination.”
(Br. 12.) In particular, Appellant argues that Yoshioka “neither teaches nor
suggests the use of bisphenols in any combination.” (Br. 15 (emphasis
omitted).)
In addition, Appellant states that “Suzuki refers to as a specific
example the use of two reducing agents in mixture, namely 2,4-dialkyl
substituted orthobisphenols and 2,6-dialkyl substituted parabisphenols,” but
argues that “this combination does not correspond to the combination recited
in the present claim 1 . . . because Suzuki discloses a mixture of
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orthobisphenol and parabisphenol while the present invention claims the
combination of two orthobisphenols.” (Br. 14, emphasis omitted.)
Appellant also argues that “there is no teaching or suggestion to
combine the references to obtain the combination of a silver iodide-based
photothermographic material with the specific combination of
orthobisphenols of the present invention.” (Br. 17.) Instead, Appellant
argues that “the Examiner has used impermissible hindsight to ‘pick and
choose’ individual components of the claimed invention from a wide variety
of references in order to ‘recreate’ the claimed invention.” (Id.)
We are not persuaded by these arguments. As discussed above, we
agree with the Examiner that both Suzuki and Yoshioka suggest using two
different orthobisphenol reducing agents in combination. Suzuki states that
“reducing agents may be used as combinations of two or more thereof” (col.
16, ll. 35-36); that 2,4-dialkyl substituted orthobisphenols are among the
“most preferred reducing agents” (col. 15, ll. 35-38); and that such
compounds are “effective for preventing discoloration upon exposure to
light” (col. 16, ll. 56-58).
Yoshioka describes a photothermographic material containing “one or
more phenol compounds as the reducing agent” (¶ 0008) and states that
o-polyphenol compounds of formula (I), which encompasses the
orthobisphenol compounds of formulas (R-1), (R-2), and (R-3), are preferred
because of their high heat-developability (¶ 0025 and ¶ 0027). Yoshioka
also specifically discloses compounds within formulas (R-1), (R-2), and
(R-3) of claim 1 (pp. 7-8). Based on the teachings in Suzuki and Yoshioka,
we find that the Examiner has set forth a prima facie case that it would have
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been obvious to include two different orthobisphenol reducing agents in
combination, including a compound of formula (R-1) and a compound of
either formula (R-2) or (R-3).
Therefore, we conclude that the Examiner has set forth sufficient
motivation to combine the applied references to obtain the combination of a
silver iodide-based photothermographic material with the specific
combination of orthobisphenols recited in claim 1.
Appellant also argues that “these references do not refer to unexpected
and superior results obtained by the use of the present invention, namely
high sensitivity and excellent tone (pure black image).” (Br. 15.) In
particular, Appellant argues that the “unexpected and superior results
obtained by the use of specific orthobisphenol reducing agents in
combination as recited in the present claim 1 are explicitly shown in the
photographic performance data in Table 1 of the specification (page 229),”
specifically in Experiments 5 and 6 as compared to Experiment 4 and in
Experiments 8 and 9 as compared to Experiment 7. (Br. 15-16.)
We find Experiments 4-96 insufficient to rebut the Examiner’s prima
facie case that claim 1 would have been obvious. Experiments 5 and 6
contain orthobisphenols corresponding to Formulas (R-1) and (R-3), and
Formulas (R-1) and (R-2), respectively. Experiment 4 contains only a

6 With regard to the comparison between Experiment 7 and Experiments 8
and 9, in addition to containing only one reducing agent, Experiment 7
differs from Experiments 8 and 9 in that the composition contains twice as
much of the polyhalogen compounds (Specification 229). Thus, these
experiments do not show that any difference in sensitivity was because of
the reducing agents.
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Formula (R-1) orthobisphenol. Experiments 5 and 6 are said to provide
good balance in color tone and pure black tone whereas Experiment 4 is said
to provide slightly bluish tone (Specification 227-229). However, Appellant
has not presented any evidence that this difference would have been
unexpected, particularly in view of the teaching in Suzuki that “the
combined use of two mono- or poly-phenolic reducing agents having alkyl
groups at the two substitution positions adjacent the hydroxy-substituted
position of the aromatic nucleus is effective for preventing discoloration
upon exposure to light” (col. 16, ll. 53-58). Thus, we are not persuaded by
the attorney argument indicating that these results would have been
unexpected. In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed.
Cir. 1984) (“It is well settled that unexpected results must be established by
factual evidence. Mere argument or conclusory statements in the
specification does not suffice.”).
We conclude that the Examiner has set forth a prima facie case that
claim 1 would have been obvious over Toya 126, Siga, Matsumoto, Suzuki,
and Yoshioka, which Appellant has not rebutted. We therefore affirm the
rejection of claim 1 under 35 U.S.C. § 103. Claims 3-5 and 8-10 fall with
claim 1.
3. OBVIOUSNESS REJECTION OF CLAIM 2
Claim 2 stands rejected under 35 U.S.C. § 103 as obvious in view of
Toya 126, Siga, Matsumoto, Suzuki, Yoshioka, and Toya 419.7 The
Examiner states that Toya 419, at column 2, lines 1-18, and column 12,
compound (II-a), describes using a “polyhalogenate compound of

7 Toya et al., U.S. Patent No. 5,656,419, issued August 12, 1997.
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formula (H) . . . to provide a photothermographic material with higher
contrast.” (Answer 4-5.) The Examiner argues that it “would have been
obvious . . . to use the polyhalogen compound taught in Toya [419] in the
material obtained by the combination of [Toya 126, Siga, Matsumoto,
Suzuki, and Yoshioka] with a reasonable expectation of achieving a material
with higher image contrast.” (Answer 5.) We conclude that the Examiner
has set forth a prima facie case that claim 2 would have been obvious.
Appellant merely argues that Toyo 419 “does not cure the deficiencies
of the other references” and that therefore “[c]laim 2 should be deemed
allowable by virtue of its dependency to claim 1.” (Br. 17-18.) However,
for the reasons discussed above, we conclude that claim 1 would have been
obvious. Appellant has not rebutted the Examiner’s prima facie case that
claim 2 would have been obvious. We therefore affirm the rejection of
claim 2 under 35 U.S.C. § 103.
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SUMMARY
The Examiner’s position is supported by the preponderance of the
evidence of record. We therefore affirm the rejection of claims 1-5 and 8-10
under 35 U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

Toni R. Scheiner )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Donald E. Adams )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Eric Grimes )
Administrative Patent Judge )

EB/MLM

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Appeal No. 2007-0218
Application No. 10/730,143

Taiyo Corporation
401 Holland Lane #407
Alexandria, VA 22314

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