Ex parte Ruger

Board of Patent Appeals and Interferences

Apr 20, 2000

08209174 (B.P.A.I. Apr. 20, 2000)

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not binding precedent of the Board.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. 35
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte REINHOLD RUGER
_____________
Appeal No. 1997-2434
Application 08/209,174
______________
ON BRIEF
_______________
Before KIMLIN, JOHN D. SMITH and KRATZ, Administrative Patent
Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-
11, all the claims in the present application. Claim 1 is
illustra-tive:
1. A process to make ultrahigh contrast
photographic negative images by developing in the
presence of an onium compound a photosensitive
recording material having at least one layer with a
silver halide emul-sion, characterized in that a
molecule of the onium compound has at least one
quaternary nitrogen atom and at least one tertiary
Appeal No. 1997-2434
Application No. 08/209,174
2
amine function.
In the rejection of the appealed claims, the examiner
relies
upon the following references.
Okamura et al. (Okamura) 5,279,919 Jan.
18, 1994
Kojima et al. (Kojima) 5,284,733 Feb. 08,
1994
Kuwabara et al. (Kuwabara) 5,288,590 Feb. 22,
1994
Appellant's claimed invention is directed to a process
for making ultrahigh contrast photographic negative images by
developing a silver halide emulsion in the presence of an
onium compound having at least one quaternary nitrogen atom
and at least one tertiary amine function.
Appellant submits at page 3 of the brief that with the
exception of claim 7, all the appealed claims stand or fall
together with claim 1. However, the argument section of
appellant's brief fails to present an argument that is
reasonably specific to claim 7. Accordingly, all the appealed
claims stand or fall together with claim 1. In re Nielson,
816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528 (Fed. Cir. 1987).
See also 37 CFR 1.192 c(7) and c(8).
Appeal No. 1997-2434
Application No. 08/209,174
3
Appealed claims 1-11 stand rejected under 35 U.S.C. §
102, or in the alternative, under 35 U.S.C. § 103 as being
unpatentable over Okamura '919, Kojima or Kuwabara.
We have thoroughly reviewed each of appellants' arguments
for patentability. However we find that appellant has not
presented sufficient reasoning or evidence to establish that
the examiner's rejections are in error. Accordingly, we will
sustain the examiner's rejections.
Appellant contends at page 5 of the brief that "[n]one of
the references disclose or even suggest a compound having a
quaternary nitrogen atom connected by a linking group to a
tertiary amine group as represented by Formula I of Claim 1."
However, as properly pointed out by the examiner, appellant's
argument is not germane to the subject matter defined by
appealed claim 1, since claim 1 fails to recite any Formula,
Formula I or otherwise. Simply put, appealed claim 1 does not
require that the quaternary nitrogen atoms and the tertiary
amine groups are connected by any linking group.
Regarding the rejection over Kojima, we agree with the
Appeal No. 1997-2434
Application No. 08/209,174
4
examiner that compounds P-28, P-29, P-30 and P-31 all contain
the claimed quaternary nitrogen atoms and the tertiary amine
function. Appellant maintains at page 6 of the Brief that
"[e]ach of the Formulas of Claim 1 of the subject invention
has at least one linking group as defined between the
quaternary nitrogen and the tertiary amine . . . Kojima
clearly does not disclose such a structure nor is there
anything in Kojima that suggests such a structure." However,
as explained above, appealed claim 1 fails to recite any such
linking group between the quaternary nitrogen and the tertiary
amine.
Turning to the rejection over Okamura '919 and Kuwabara,
appellant submits the imidazoline structure of the references
is an aromatic system and "one of ordinary skill in the art
understands that a tertiary amine is not formed in a N, N-
disubstituted imidazolium group." (page 6 of brief, second
paragraph). As evidentiary support for the argument,
appellant cites Beilstein EIII/IV 23, page 568, formula V.
However, although Beilstein discloses an imidazolium group
Appeal No. 1997-2434
Application No. 08/209,174
5
that corresponds to the pertinent moieties of Okamura '919 and
Kuwabara, appellant fails to point to where in the Beilstein
disclosure it is taught that the nitrogen atom having the
alkyl substituent is not considered a tertiary amine function.
Hence, appellant has not effectively rebutted the examiner's
factual determination that the cited compounds of Okamura '919
and Kuwabara are onium compounds which have the presently
claimed
quaternary nitrogen atom and tertiary amine function. To the
extent there is a distinction between the onium compounds
which make up appellant's disclosed invention and those taught
by the applied prior art, such distinction is not apparent
from the recitation of appealed claim 1, with which all the
appealed claims stand or fall together.
In conclusion, based on the foregoing, the examiner's
decision rejecting the appealed claims is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
Appeal No. 1997-2434
Application No. 08/209,174
6
AFFIRMED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN D. SMITH ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )
vsh
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