Ex parte Hasebe

Board of Patent Appeals and Interferences

May 25, 1999

08063297 (B.P.A.I. May. 25, 1999)

Application for patent filed May 19, 1993. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was
not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KAZUNORI HASEBE
____________
Appeal No. 95-4747
Application No. 08/063,2971
____________
HEARD: May 4, 1999
____________
Before JOHN D. SMITH, PAK and KRATZ, Administrative Patent
Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the examiner's refusal to allow claims 2-4, 6-11, and 17-28,
which are all of the claims pending in this application. Upon
the filing of this appeal, the examiner approved entry
Appeal No. 95-4747
Application No. 08/063,297
2
(advisories mailed October 25, 1994 and January 09, 1995) of
amendments filed October 11, 1994 and December 22, 1994, after
the final rejection.
BACKGROUND
The appellant's invention relates to a color photographic
material. An understanding of the invention can be derived
from a reading of exemplary claim 28, which has been
reproduced below.
28. A multiple layer silver halide color photographic
material comprising, on a reflective support, a plurality of
silver halide emulsion layers, at least one silver halide
emulsion layer containing a cyan dye-forming coupler, at least
one silver halide emulsion layer containing a magenta dye-
forming coupler, and at least one silver halide emulsion layer
containing a yellow dye-forming coupler, wherein the silver
chloride content of the silver halide emulsion contained in at
least one of the emulsion layers is at least 90 mol%; and a
plurality of non-photosensitive colloid layers wherein at
least one contains an ultraviolet-absorbing agent; wherein
said material contains a water-soluble dye, and wherein said
silver halide color photographic material comprises, in the
non-photosensitive colloid layer furthest from the support
containing an ultraviolet-absorbing agent, a dispersion of an
emulsified and dispersed mixture of a solution of at least on
ultraviolet-absorbing agent represented by formulae (I) or
(II), and at least one water-insoluble polymer compound, and a
gelatin having an isoelectric point of at least 6.0:
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3
wherein R , R and R each represent a hydrogen atom, a halogen1 2 3
atom, a nitro group, a hydroxyl group, an alkyl group, an
alkoxy group, an aryl group, an aryloxy group, or an acylamino
group, and R and R each represent a hydrogen atom, an alkyl4 5
group, an alkoxy group, or an acyl group, wherein the R , R ,1 2
R , R and R groups may be substituted, X represents -CO- or -3 4 5
COO-, and l, m and n are each an integer of 1 to 4.
The prior
art references
of record
Appeal No. 95-4747
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4
relied upon by the examiner in rejecting the appealed claims
are:
Sasaki et al. (Sasaki I) 4,692,399 Sep.
08, 1987
Sakai et al. (Sakai) 4,865,957 Sep. 12,
1989
Ishigaki et al. (Ishigaki) 4,879,204 Nov. 07,
1989
Sasaki et al. (Sasaki II) 4,992,358 Feb. 12,
1991
Hayashi 5,206,120 Apr. 27,
1993
Claims 2-4, 6-11, and 17-28 stand rejected under 35
U.S.C.
§ 103 as being unpatentable over any one of Sakai, Sasaki I or
Sasaki II each in view of Hayashi and Ishigaki.
OPINION
We have carefully reviewed the respective positions
advanced by appellant and the examiner. In so doing, we are
constrained to agree with appellant, based on the present
record, that the examiner has not carried the initial burden
of establishing a prima facie case of obviousness with respect
to the subject matter defined by the appealed claims.
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5
Accordingly, we shall not sustain the examiner's rejection as
follows.
According to appellant, the claims stand or fall together
(brief, page 5). We have selected claim 28, the only
independent claim on appeal, as a representative claim upon
which the present decision is based.
It is axiomatic that, in proceedings before the PTO,
claims in an application are to be given their broadest
reasonable interpretation consistent with the specification,
and that claim language should be read in light of the
specification as it would be interpreted by one having
ordinary skill in the art. In re Sneed, 710 F.2d 1544, 1548,
218 USPQ 385, 388 (Fed. Cir. 1983).
Following that basic rule of claim interpretation, we
determine that claim 28 specifies a color photographic
material that includes at least five layers including at least
two non-photosensitive layers and at least three silver halide
containing emulsion layers provided on a reflective support.
At least one silver halide containing emulsion layer of each
of cyan, magenta, and yellow dye-forming couplers are formed.
The photographic material includes plural non-photosensitive
Appeal No. 95-4747
Application No. 08/063,297
Appellant's arguments and call for an affidavit fall2
(continued...)
6
colloid layers with at least one containing an ultraviolet
absorbing agent. The non-photosensitive colloid layer
containing an ultraviolet absorbing agent which is furthest
from the support includes a water-insoluble polymer and a
gelatin. The latter layer is obtained from a dispersion of an
emulsified and dispersed mixture of a solution of at least one
ultraviolet absorption agent obtained from a class of
compounds defined by two separate claimed formulas, at least
one water insoluble polymer compound, and a gelatin having an
isoelectric point of at least 6.0. The photographic material
contains a water-soluble dye and at least one of the silver
halide emulsion layers includes a 90 mole percent silver
chloride content.
In our view, the examiner has failed to set forth a
cogent explanation as to why a skilled artisan would have been
led or motivated by the applied secondary references and the
undisputed factual assertions of the examiner (page 8 of the
nonfinal office action mailed September 8, 1993, pages 7 and 8
of the final rejection and pages 5 and 6 of the answer) to2
Appeal No. 95-4747
Application No. 08/063,297
(...continued)2
short of a specific denial of each of the facts asserted by
the examiner. See In re Fox, 471 F.2d 1405, 1407, 176 USPQ
340, 341 (CCPA 1973).
7
modify the photographic materials of any of Sakai, Sasaki I or
Sasaki II to include a non-photosensitive colloid layer
containing at least one ultraviolet absorption agent, at least
one water insoluble polymer compound, and a gelatin having an
isoelectric point of at least 6.0 in the position as claimed.
In this regard, we note that even if the applied reference
teachings and asserted "common knowledge" would have rendered
the use of a separate non-photosensitive layer containing a
water insoluble polymer compound in any of Sakai, Sasaki I or
Sasaki II prima facie obvious, that combination of layers
would not result in the claimed photographic material wherein
the specified at least one ultraviolet absorption agent is
present in the same layer as the water insoluble polymer
compound and the gelatin having an isoelectric point of at
least 6.0.
To establish a prima facie case of obviousness, an
examiner must explain why the teachings from the prior art
itself would have suggested the claimed subject matter to one
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8
of ordinary skill in the art. See In re Rinehart, 531 F.2d
1048, 1051, 189 USPQ 143, 147 (CCPA 1976). The mere fact that
the prior art could be modified as proposed by the examiner is
not sufficient to establish a prima facie case of obviousness.
See In re Fritsch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783
(Fed. Cir. 1992).
In our view, the motivation relied upon by the examiner
for combining the teachings of the references to arrive at
appellant’s claimed invention herein appears to have come from
the disclosure of appellant’s invention in his specification
rather than from the prior art. Accordingly, based on the
present record, the applied prior art would not have rendered
the specifically claimed process herein prima facie obvious.
Because we reverse on the basis of failure to establish a
prima facie case of obviousness, we need not reach the issue
of the sufficiency of appellant's showing of alleged
unexpected results. See In re Geiger, 815 F.2d 686, 688, 2
USPQ2d 1276, 1278 (Fed. Cir. 1987).
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For the above reasons, we find that the examiner has not
set forth a factual basis which is sufficient to support a
conclusion of obviousness of appellant's claimed invention.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 2-4, 6-11, and 17-28 under 35 U.S.C. § 103 as being
unpatentable over any one of Sakai, Sasaki I or Sasaki II each
in view of Hayashi and Ishigaki 12-16 under 35 U.S.C. § 103 is
reversed.
REVERSED
JOHN D. SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PETER F. KRATZ )
Appeal No. 95-4747
Application No. 08/063,297
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Administrative Patent Judge )
bae
Appeal No. 95-4747
Application No. 08/063,297
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