Ex parte Philip et al.

Board of Patent Appeals and Interferences

Mar 1, 1999

08150465 (B.P.A.I. Mar. 1, 1999)

Application for patent filed November 10, 1993. 1
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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journal and (2) is not binding precedent of the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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JAMES B. PHILIP Jr., and CHARLES W. GOMEZ
____________
Appeal No. 95-3624
Application No. 08/150,4651
____________
ON BRIEF
____________
Before JOHN D. SMITH, PAK and KRATZ, Administrative Patent
Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
James B. Philip, Jr. et al. (appellants) appeal from the
examiner’s final rejection of claims 1 through 20, which are
all of the claims pending in the application.
Appeal No. 95-3624
Application No. 08/150,465
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The subject matter on appeal is directed to a combination
of particular water-soluble, infrared absorbing indolenine
dyes in a hydrophilic binder for photothermographic
antihalation systems. See specification, pages 3 and 4, in
conjunction with Brief,
page 6. This subject matter is adequately described in claim
1 which is reproduced below:
1. A photothermographic element comprising a substrate
having on at least one side thereof a photothermographic
system comprising silver halide spectrally sensitized to the
infrared region
of the electrom
agnetic spectrum
, a light insensit
ive silver
source, a reducing
agent for silver
ion, and a
binder, said element further comprising at least one
hydrophilic layer which contains an infrared-absorbing dye
having a central nucleus of the formula
wherein
n is an integer of 1 to 12,
Appeal No. 95-3624
Application No. 08/150,465
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Q is an ionic acidic moiety,
and M is a cation,
in an amount sufficient as to provide a transmission optical
density of at least 0.1 at the wavelength of maximum
sensitivity of said sensitized silver halide.
As evidence of obviousness, the examiner relies on the
following prior art references:
Lea 4,835,096 May 30,
1989
Ohno et al. (Ohno) 4,839,265 Jun. 13,
1989
Yoshida et al. (Yoshida) 5,153,112 Oct.
06, 1992
Claims 1 through 20 stand rejected under 35 U.S.C. § 103
as unpatentable over the combined disclosures of Lea and
either Ohno or Yoshida.
We reverse.
The examiner’s § 103 rejection is predicated on the
ground that it would have been obvious to use the antihalation
dyes described in Ohno or Yoshida as the antihalation dye for
the photothermographic element described in the Lea reference.
In maintaining the § 103 rejection, the examiner recognizes
that Ohno or Yoshida teaches that its antihalation dyes are
used in a wet photographic system (not a photothermographic
Appeal No. 95-3624
Application No. 08/150,465
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(dry) system) and leave a stain during the processing. See
Answer, pages 3
and 4. To remedy these deficiencies, the examiner asserts
(Answer, pages 3 and 4) that
it has been common in the art to use the
antihaltion [sic, antihalation] dyes in both [the
wet] photographic material and [the dry]
photographic material for halation prevention and
irradiation prevention. . . .
. . . the stain found in the wet processing
which caused by the wet processing would not have
been expected to be found in the dry processing.
The problem associated with the use of the infrared
absorbent in the photothermographic material is not
the stain found after dry processing, but the color
of the dyes in the infrared absorbing layer which
causes undesirable high back ground density (Dmin).
The above assertions, however, are unsupported by or
negated by the evidence proffered by the examiner himself.
First, the very prior art relied upon by the examiner, namely
Lea, appears to contradict the examiner’s position regarding
the use of a chemical compound useful for an antihalation dye
from a wet photographic system as the antihalation dye for a
dry photographic system (silver halide photothermographic
imaging material). Specifically, the Lea reference states
(column 1, line 58 to column 2, line 11) that:
Appeal No. 95-3624
Application No. 08/150,465
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Many cyanine and related dyes are well known for
their ability to impart spectral sensitivity to a
gelatino silver halide system. The wavelength of
peak sensitivity is a function of the dye’s
wavelength of peak light absorbance. Whilst many
such dyes provide some spectral sensitisation in dry
silver formulations the dye sensitisation is often
very inefficient and it is not possible to translate
the performance of a dye in gelatino silver halide
systems to dry silver systems. The emulsion making
procedures and chemical environment of dry silver
systems are very harsh compared to those of gelatino
silver halide systems. The presence of large
surface areas of fatty acids and fatty acids salts
restricts the surface deposition of sensitising dyes
onto silver halide surfaces and may remove
sensitising dye from the surface of the silver
halide grains. The large variations in pressure,
temperature, pH and solvency encountered in the
preparation of dry silver formulations aggravate the
problem. Thus sensitising dyes which perform well
in gelatino silver halide systems are often
inefficient in dry silver formulations.
Second, the examiner does not refer to or supply any evidence
which supports his assertion regarding the stain. Nor does
the examiner refer to or supply any evidence which supports
his assertion regarding the problems associated with the use
of the infrared absorbing dyes in the photothermographic
material.
Appeal No. 95-3624
Application No. 08/150,465
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In view of the forgoing, we are convinced that the
examiner has not carried his burden of demonstrating a prima
facie case of obviousness within the meaning of 35 U.S.C. §
103. Accordingly, we reverse the examiner’s decision
rejecting claims 1 through 20 under 35 U.S.C. § 103.
Appeal No. 95-3624
Application No. 08/150,465
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED
JOHN D. SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )
Appeal No. 95-3624
Application No. 08/150,465
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Mark A. Litman
3M Office of Intel. Prop. Counsel
P.O. Box 33427
St. Paul, MN 55133-3427
JENINE GILLIS
Appeal No. 95-3624
Serial No. 08/150,465
Judge PAK
Judge JOHN D. SMITH

Judge KRATZ
Received: 2/24/99
Typed: 2/24/99

DECISION: REVERSED

Send Reference(s): Yes No
or Translation(s)
Panel Change: Yes No
3-Person Conf. Yes No
Remanded: Yes No
Brief or Heard
Group Art Unit: 1506
Index Sheet-2901 Rejection(s): ___________
Acts 2: ____
Palm: ____
Mailed:
Updated Monthly Disk (FOIA): ____
Updated Monthly Report: ___
Appeal No. 95-3624
Application No. 08/150,465
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