Ex parte TEXTER et al.

Board of Patent Appeals and Interferences

Nov 26, 1997

08025474 (B.P.A.I. Nov. 26, 1997)

Application for patent filed March 3, 1993. According to1
appellants, the application is a continuation-in-part of Applica-
tion 07/763,029, filed September 20, 1991, abandoned.
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(2) is not binding precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JOHN TEXTER,
ARTHUR H. HERZ
and
HENRY W. ALTLAND
_____________
Appeal No. 95-2765
Application 08/025,4741
______________
HEARD: November 12, 1997
_______________
Before JOHN D. SMITH, WEIFFENBACH and OWENS, Administrative
Patent Judges.
Appeal No. 95-2765
Application 08/025,474
2
JOHN D. SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal pursuant to 35 U.S.C. § 134 from the
final rejection of claims 1-14 and 16-25.
The subject matter on appeal is directed to a method
(claims 1-11 and 18-25) of accelerating black and white develop-
ment of negative-type silver halide photographic materials by
contacting the materials, after exposure to an image, with a
developer prebath or developer bath comprising a triazolium
thiolate accelerator compound as defined in formula (I) in the
claims. Composition claims 12-14, 16, and 17 comprising aqueous
solutions of the bath or prebath are also presented in this
appeal.
Copies of representative method claim 1 and composition
claim 12 are reproduced in an attached appendix.
The references of record relied upon by the examiner
are:
Altland et al. (Altland) 4,378,424 Mar. 29, 1983
Kojima et al. (Kojima) 5,037,726 Aug. 6, 1991
The appealed claims stand rejected for obviousness
Appeal No. 95-2765
Application 08/025,474
3
(35 U.S.C. § 103) in view of Kojima. Additionally, composition
claims 12-14, 16, and 17 stand rejected under the same section of
this statute in view of Altland.
We affirm the examiner’s rejection of composition
claims 12-14, 16, and 17 in view of Kojima. We reverse all other
rejections.
THE REJECTION OF THE COMPOSITION CLAIMS IN VIEW OF KOJIMA
The claimed composition is directed to a developer
prebath or developer bath which comprises an aqueous solution of
a triazolium thiolate accelerator compound in an amount between
10 and 10 moles/L. The bath does not contain any iron (III)-8 -3
ion complex salt having bleaching activity or any nucleating
agent capable of chemically fogging a negative-type silver halide
emulsion. Appealed claim 12 also includes the language that the
“development comprises developing agent selected from the group
consisting of dihydroxybenzenes 3-pyrazolidones, and amino-
phenols” which language, according to appellants, unequivocally
indicates that the developer baths of the claim comprise the
recited developing agents. See the Reply Brief at page 9. It is
reasonably clear, however, that such claim language does not
require that the developer prebaths contain the recited
Appeal No. 95-2765
Application 08/025,474
4
developing agents. It is also important to note, at the outset,
that the claimed baths are to be used for black-and-white
development of a negative-type silver halide photographic
element.
Kojima discloses developer baths and developer prebaths
for the development of a direct positive image, not for the
development of a negative-type silver halide photographic element
as claimed. However, the discovery of a new use of a previously
known composition, even when that use is unobvious from the prior
art, cannot impart patentability to claims to the known composi-
tion. In re Pearson, 494 F.2d 1399, 1403, 181 USPQ 641, 644
(CCPA 1974).
Although Kojima does not disclose a working example of
either a developer bath or developer prebath solution, Kojima
expressly teaches that triazolium thiolate compounds, as claimed
herein, may be incorporated into developer solutions and/or a
prebath therefor preferably in an amount of from 1 X 10 to -8
1 X 10 moles/L as nucleation accelerators. See Kojima at-3
column 13, line 58, to column 14, line 4. We recognize that the
appealed claims exclude any nucleating agent capable of
chemically fogging a negative-type silver halide emulsion, and
Appeal No. 95-2765
Application 08/025,474
5
that Kojima may use a nucleating agent, as described at column
17, line 1, to column 19, line 40, in a “chemical fogging method”
by incorporation of the nucleating agent into a developer bath or
prebath (column 16, lines 44-49). However, Kojima preferably
incorporates the nucleating agent into the light-sensitive
material, not the bath or prebath, when “chemical fogging”
(column 16, line 49), and Kojima apparently requires no
nucleating agent in the developer bath or prebath when following
an “optical fogging method” (column 15, line 58, to column 16,
line 2, and Kojima claim 16). Accordingly, we agree with the
examiner that Kojima suggests the use of a developer prebath or
developer bath that does not contain a nucleating agent capable
of chemically fogging a negative-type silver halide emulsion.
With respect to the negative limitation in the appealed
composition claim that the developer prebath or developer bath
does not contain any iron (III) ion complex salt having bleaching
activity, Kojima teaches that bleaching agents such as Fe(III)
are preferably used in a separate bleaching step by incorpora-
tion into a bleaching bath or bleaching prebath. See Kojima at
column 24, lines 4-63. Accordingly, for Kojima’s purposes, i.e.,
the development of black and white direct-positive photographic
materials, bleaching agents are employed in separate compositions
Appeal No. 95-2765
Application 08/025,474
6
from the developer baths or developer prebaths. The disclosures
of Kojima, discussed above, raise an inference of obviousness for
the subject matter defined by the composition claims on appeal.
We have carefully considered each of the arguments
advanced by appellants and each of the declarations made of
record to support appellants’ arguments in this appeal. However,
with respect to the rejection of the composition claims based on
Kojima, we agree with the examiner that the evidence of obvious-
ness outweighs the evidence of nonobviousness. Particularly, we
are not convinced by the experimentation reported in the
auxiliary declaration filed by John Texter on July 5, 1994 that
the image forming method described by the United States Patent
No. 5,037,726 to Kojima is inoperable. That specific developer
prebaths labeled PB1 and PB2 (with and without a specific nuclea-
tion agent) obliterated the direct-positive image of a specific
Eastman Kodak film does not satisfy appellants’ burden of showing
the inoperability of the Kojima patent (assigned to Fuji Photo
Film Co., Ltd.).
Initially, we note that a patent is presumed valid
(35 U.S.C. § 282), and this presumption of validity applies to a
Appeal No. 95-2765
Application 08/025,474
7
patent’s disclosure and each of its claims. In re Spence, 261
F.2d 244, 246, 120 USPQ 82, 83 (CCPA 1958). Thus, the effect of
appellants’ declaration is to invalidate method claims 13 and 14
of the Kojima patent which specifically recite the formation of
a direct-positive image by using either a developing solution
or a prebath. With respect to the experiments described in the
declaration, it must be said that in a United States patent it is
to be presumed that a process, if used by one skilled in the art,
will produce the product alleged by the patentee and such
presumption is not overcome by a mere showing that it is possible
to operate within the disclosure (e.g., by using an Eastman Kodak
film rather than a Fuji Photo film) without obtaining the desired
product. In re Michalek, 162 F.2d 229, 231-32, 74 USPQ 107, 109
(CCPA 1947). Upon review of all the evidence of record, it is
our judgment that appellants have not provided a sufficient
quantum of evidence to establish that Kojima constitutes a
nonenabling (inoperative) disclosure with respect to the process
in question or that claims 13 and 14 of Kojima are invalid.
THE REJECTION OF THE METHOD CLAIMS OVER KOJIMA
Appeal No. 95-2765
Application 08/025,474
8
Appealed method claims 1-11 and 18-25 also stand
rejected for obviousness in view of the disclosures of Kojima.
We reverse this rejection.
As emphasized throughout the record, appellants’
appealed method claims are directed to the development of a
negative type silver halide photographic element. In contrast,
Kojima’s disclosure is directed exclusively to direct-positive
image formation, direct-positive silver halide emulsions, and
direct-positive developing and processing methods. Particularly
see Kojima at column 23, lines 47-53.
As explained in the Texter declaration filed
July 5, 1994 entitled “NEGATIVE/DIRECT-POSITIVE DECLARATION,”
negative-type silver halide emulsions are comprised of silver
halide grains which principally form latent images at surface
sites, since surfaces have the greatest concentration of defects
suitable for latent image stabilization, for normal silver halide
grains. Thus, when negative-type emulsions are exposed and
developed, the predominant development is surface development.
On the other hand, Texter explains in the declaration that
direct-positive type silver halide emulsions are comprised of
silver halide grains that principally form latent image at sites
interior to the grain. Thus, Texter concludes that negative-
Appeal No. 95-2765
Application 08/025,474
9
type emulsions and positive-type emulsions “are distinctly
different and are used for different purposes.” See the
declaration at paragraph 6. This conclusion stands unrebutted by
the examiner. Moreover, the examiner’s statement in the Answer
bridging pages 14 and 15 that a negative-type or direct-positive
type silver halide element differs from each other in its final
image, “not the element before processing” ignores the express
language required by the method claim which is the development of
a “negative-type silver halide photographic element. It is well
settled that every limitation in a claim must be considered in
resolving the obviousness of a claimed invention as a whole
within the meaning of 35 U.S.C. § 103. In re Geerdes, 491 F.2d
1260, 1262-63, 180 USPQ 789, 791 (CCPA 1974).
We also observe that no prior art reference has been
cited disclosing the type or types of prior art developer pre-
baths or developer baths which have been used for negative-type
silver halide photographic elements. Nor has the examiner cited
any evidence that the developer prebaths or developer baths used
for development of a direct-positive silver halide photographic
element may be used for the development of a negative type silver
Appeal No. 95-2765
Application 08/025,474
10
halide photographic element as clearly recited in the method
claims on appeal. Accordingly, the examiner has failed to
establish a factual basis to support a legal conclusion that it
would have been obvious within the meaning of 35 U.S.C. § 103 to
use the Kojima developer prebaths or developer baths in a process
or development of a negative-type silver halide photographic
element. We, therefore, reverse the examiner’s rejection of the
appealed method claims based on the disclosures of Kojima.
THE REJECTION OF THE APPEALED COMPOSITION CLAIMS OVER ALTLAND
Appealed composition claims 12-14, 16, and 17 are also
rejected under 35 U.S.C. § 103 over Altland. We also reverse
this rejection.
Although Altland discloses aqueous compositions of
triazolium thiolate, for Altland’s purposes, such compositions
are either used for fixing or stabilization. When used as a
fixing composition (fixing bath), Altland describes a composition
which contains 70 X 10 moles/L in triazolium thiolate-3
concentration, i.e., a composition that contains 70 times the
amount of triazolium thiolate than the amount defined by the
appealed claims. Further, appellants have provided evidence in
the declaration executed June 15, 1994 by Texter that a fixing
Appeal No. 95-2765
Application 08/025,474
11
bath with a triazolium thiolate concentration of 1.0 X 10-3
moles/L is inoperable as a fixing bath.
With respect to the examiner’s assertion that Altland
also describes the use of triazolium thiolate aqueous
compositions for use as stabilizers, appellants point out that
when used as a stabilizer, the triazolium thiolates are
restricted to use for incorporation into the silver halide
element. There is no factual support for the examiner’s implied
assertion that one would form a triazolium thiolate aqueous
composition having a triazolium thiolate concentration in the
range claimed for that purpose. Accordingly, we also reverse the
examiner’s separately stated rejection of the appealed
composition claims for obviousness over Altland.
In summary, the examiner’s rejection of the appealed
composition claims over Kojima is affirmed. The examiner’s
rejection of the appealed method claims over Kojima is reversed.
The examiner’s rejection of the appealed composition claims over
Altland is reversed. Accordingly, the decision of the examiner
is affirmed-in-part.
No time period for taking any subsequent action in con-
nection with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
Appeal No. 95-2765
Application 08/025,474
12
JOHN D. SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CAMERON WEIFFENBACH ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
TERRY J. OWENS )
Administrative Patent Judge )
Appeal No. 95-2765
Application 08/025,474
13
Joshua G. Levitt
Eastman Kodak Company
Patent Department
Rochester, NY 14650-2201
Appeal No. 95-2765
Application 08/025,474
- A1 -
APPENDIX
1. A method of accelerating image formation during
black and white development of a negative type silver halide
photographic element comprising the steps of:
exposing said negative type silver halide photographic
element to actinic radiation; and
contacting said negative-type silver halide
photographic element during processing with a developer prebath
or a developer bath comprising an accelerator compound of the
formula:
wherein
R is a substituted or unsubstituted alkyl group having1
from 1 to 28 carbon atoms, a substituted or unsubstituted alkenyl
group having from 1 to 28 carbon atoms, a substituted or
unsubstituted cycloalkyl group having from 3 to 28 carbon atoms,
a substituted or unsubstituted aryl group having from 6 to 33
carbon atoms, an alkyl, cycloalkyl, alkenyl, alkoxyalkyl, aryl,
or phenoxy group, connecting to a substituted or unsubstituted
aryl group, having 6 to 33 carbon atoms, or an alkyl, cycloalkyl,
alkenyl, alkoxyalkyl, aryl, or phenoxy group connecting to a
substituted or unsubstituted heterocyclic ring containing two or
more heteroatoms having 1 to 25 carbon atoms;
R is a substituted or unsubstituted amine group having2
from 0 to 25 carbon atoms, a substituted or unsubstituted alkyl
group having from 1 to 28 carbon atoms, a substituted or unsub-
stituted alkenyl group having from 1 to 28 carbon atoms, a
substituted or unsubstituted cycloalkyl group from 3 to 28 carbon
Appeal No. 95-2765
Application 08/025,474
- A2 -
atoms, a substituted or unsubstituted acyloxy group having from 2
to 25 carbon atoms, a substituted or unsubstituted alkoxy group
having from 1 to 28 carbon atoms, a substituted or unsubstituted
aryl group having from 6 to 33 carbon atoms, a substituted or
unsubstituted heterocyclic ring having from 1 to 28 carbon atoms
and one or more hetero atoms, an alkyl, cycloalkyl, alkenyl,
alkoxyalkyl, aryl, or phenoxy group, connecting to a substituted
or unsubstituted aryl group, having 6 to 33 carbon atoms, or an
alkyl, cycloalkyl, alkenyl, alkoxyalkyl, aryl, or phenoxy group
connecting to a substituted or unsubstituted heterocyclic ring
containing two or more hetero atoms having 1 to 25 carbon atoms;
R is a substituted or unsubstituted amine group having3
from 0 to 25 carbon atoms, a substituted or unsubstituted alkyl
group having from 1 to 28 carbon atoms, a substituted or unsub-
stituted alkenyl group having from 1 to 28 carbon atoms, a sub-
stituted or unsubstituted cycloalkyl group having from 3 to 28
carbon atoms, a substituted or unsubstituted acyloxy group having
from 2 to 25 carbon atoms, a substituted or unsubstituted alkoxy
group having from 1 to 28 carbon atoms, a substituted or unsub-
stituted aryl group having from 6 to 33 carbon atoms, a
substituted or unsubstituted heterocyclic ring having from 1 to
28 carbon atoms and one or more hetero atoms, an alkyl,
cycloalkyl, alkenyl, alkoxyalkyl, aryl, or phenoxy group,
connecting to a substituted or unsubstituted aryl group, having 6
to 33 carbon atoms, or an alkyl, cycloalkyl, alkoxyalkyl, aryl,
or phenoxy group connecting to a substituted or unsubstituted
heterocyclic ring containing two or more hetero atoms;
said R , R , and R may further combine with each other1 2 3
to form a 5-, 6-, or 7-membered ring; and wherein
said developer prebath and developer bath do not
contain any iron(III) ion complex salt having bleaching activity
or any nucleating agent capable of chemically fogging a negative-
type silver halide emulsion.
12. A bath selected from the group consisting of
developer prebaths and developer baths for black-and-white
Appeal No. 95-2765
Application 08/025,474
- A3 -
development of a negative-type silver halide photographic
element, wherein said development comprises developing agent
selected from the group consisting of dihydroxybenzenes,
3-pyrazolidones, and aminophenols; and wherein said bath
comprises an aqueous solution of
accelerator compound of the
formula:

wherein
R is a substituted or unsubstituted alkyl group having1
from 1 to 28 carbon atoms, a substituted or unsubstituted alkenyl
group having from 1 to 28 carbon atoms, a substituted or
unsubstituted cycloalkyl group having from 3 to 28 carbon atoms,
a substituted or unsubstituted aryl group having from 6 to 33
carbon atoms, an alkyl, cycloalkyl, alkenyl, alkoxyalkyl, aryl,
or phenoxy group, connecting to a substituted or unsubstituted
aryl group, having 6 to 33 carbon atoms, or an alkyl, cycloalkyl,
alkenyl, alkoxyalkyl, aryl, or phenoxy group connecting to a
substituted or unsubstituted heterocyclic ring containing two or
more heteroatoms having 1 to 25 carbon atoms;
R is a substituted or unsubstituted amine group having2
from 0 to 25 carbon atoms, a substituted or unsubstituted alkyl
group having from 1 to 28 carbon atoms, a substituted or unsub-
stituted alkenyl group having from 1 to 28 carbon atoms, a sub-
stituted or unsubstituted cycloalkyl group from 3 to 28 carbon
Appeal No. 95-2765
Application 08/025,474
- A4 -
atoms, a substituted or unsubstituted acyloxy group having from
2 to 25 carbon atoms, a substituted or unsubstituted alkoxy group
having from 1 to 28 carbon atoms, a substituted or unsubstituted
aryl group having from 6 to 33 carbon atoms, a substituted or
unsubstituted heterocyclic ring having from 1 to 28 carbon atoms
and one or more hetero atoms, an alkyl, cycloalkyl, alkenyl,
alkoxyalkyl, aryl, or phenoxy group, connecting to a substituted
or unsubstituted aryl group, having 6 to 33 carbon atoms, or an
alkyl, cycloalkyl, alkenyl, alkoxyalkyl, aryl, or phenoxy group
connecting to a substituted or unsubstituted heterocyclic ring
containing two or more hetero atoms having 1 to 25 carbon atoms;
R is a substituted or unsubstituted amine group having3
from 0 to 25 carbon atoms, a substituted or unsubstituted alkyl
group having from 1 to 28 carbon atoms, a substituted or unsub-
stituted alkenyl group having 1 to 28 carbon atoms, a substituted
or unsubstituted cycloalkyl group having from 3 to 28 carbon
atoms, a substituted or unsubstituted acyloxy group having form 2
to 25 carbon atoms, a substituted or unsubstituted alkoxy group
having from 1 to 28 carbon atoms, a substituted or unsubstituted
aryl group having from 6 to 33 carbon atoms, a substituted or
unsubstituted heterocyclic ring having from 1 to 28 carbon atoms
and one or more hetero atoms, an alkyl, cycloalkyl, alkenyl,
alkoxyalkyl, aryl, or phenoxy group, connecting to a substituted
or unsubstituted aryl group, having 6 to 33 carbon atoms, or an
alkyl, cycloalkyl, alkoxyalkyl, aryl, or phenoxy group connecting
to a substituted or unsubstituted heterocyclic ring containing
two or more hetero atoms;
said R , R , and R may further combine with each other1 2 3
to form a 5-, 6- or 7-membered ring; with the proviso that
said accelerator compound is present in an amount
between 10 and 10 moles/L; and-8 -3
said developer prebath and developer bath do not
contain any iron(III) ion complex salt having bleaching activity
or any nucleating agent capable of chemically fogging a negative-
type silver halide emulsion.