Ex parte Twist

Board of Patent Appeals and Interferences

Sep 17, 1999

08311635 (B.P.A.I. Sep. 17, 1999)

Application for patent filed September 23, 1994.
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journal and (2) is not binding precedent of the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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte PETER J. TWIST
________________
Appeal No. 1996-3824
Application 08/311,6351
________________
ON BRIEF
________________
Before WINTERS, METZ and JOHN D. SMITH, Administrative Patent
Judges.
METZ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the
examiner's refusal to allow claims 1 through 5, 7 through 11
and 13 through 20, all the claims remaining in this
Appeal No. 96-3824
Application No. 08/311,635
Appellant's brief includes claim 6 in the appendix, 2
"Claims on Appeal". Nevertheless, claim 6 was canceled by
appellant in Paper Number 8. Accordingly, claim 6 forms
no issue in this appeal.
2
application.2
At page 1 of his brief, appellant informs this Board that
appellant's commonly assigned, copending application Serial
Number 08/317,977 is currently on appeal. The related co-
pending application is directed to an aqueous redox
composition and its use for processing photographic materials.
Appellant represents that terminal disclaimers have been filed
in both cases, an apparent reference to a prospective
obviousness-type double patenting rejection.
Said related, copending application is before the same
merits panel of this Board as this appeal in Appeal Number
1996-1675. A decision in said appeal was rendered on even
date with this decision.
THE INVENTION
The claimed invention is directed to aqueous compositions
useful in color photography. The compositions are said to be
Appeal No. 96-3824
Application No. 08/311,635
3
useful as redox amplifiers and comprise, in particular amounts
and at a particular pH achieved by the use of a particular
phosphate buffer (see appellant’s specification at page 4,
lines 9 through 12), a color developing agent and hydrogen
peroxide or a compound which provides hydrogen peroxide and an
hydroxylamine of a particular formula or a salt thereof.
Appellant also claims the method of developing an imagewise
exposed color photographic element by using appellant's
compositions described above.
Claims 1 and 10 are reproduced below for a more facile
understanding of the appealed subject matter.
1. An aqueous redox amplifier composition comprising
a colour developing agent, hydrogen peroxide or a
compound which provides hydrogen peroxide and a
hydroxylamine compound of the formula:

R 1
OH-N (I)
R 2

or a salt thereof wherein R and R1 2
are each a substituted or unsubstituted alkyl group
of 1-4 carbon atoms and wherein the concentration
ranges are:
hydrogen peroxide from 0.5
to 10 ml/l (as 30% w/w solution),

Appeal No. 96-3824
Application No. 08/311,635
4
hydroxylamine compound
from 0.5 to 15 ml/l (as an 85% solution of
diethylhydroxylamine), and

wherein the composition is buffered by a phosphate
to a pH in the range of from 11 to 12.

10. A method for processing an
imagewise exposed colour photographic element
comprising contacting said element with an aqueous
redox amplifier composition comprising a colour
developing agent, hydrogen peroxide or a compound
which provides hydrogen peroxide and a hydroxylamine
compound of the formula:

R 1
OH-N (I)
R 2

or a salt thereof wherein R and R are each a1 2
substituted or unsubstituted alkyl group of 1-4
carbon atoms and wherein the concentration ranges
are:
hydrogen peroxide from 0.5 to 10
ml/l (as 30% w/w solution),

hydroxylamine compound from
0.5 to 15 ml/l (as an 85% solution of
diethylhydroxylamine), and

wherein the composition is buffered by a phosphate
to a pH in the range of from 11 to 12.
The references of record which are being relied on by the
examiner as evidence of obviousness are:
Nakamura et al. (Nakamura) 4,414,305 November 8,
1983
Appeal No. 96-3824
Application No. 08/311,635
5
Wingender et al. (Wingender) 5,200,301 April 6,
1993
Claims 1 through 5, 7 through 11 and 13 through 20 stand
rejected under 35 U.S.C. § 103 as being unpatentable from the
disclosure of Nakamura considered with Wingender. We reverse.
OPINION
The examiner has relied on the disclosure in Nakamura at
column 13, lines 17 and 18 for the purpose of establishing
that "hydroxylamine or its salt" may be added to an aqueous
redox amplifier composition including hydrogen peroxide or a
compound which releases hydrogen peroxide and a phosphate
buffering agent. Wingender is said to establish that it was
known to use 85% by weight diethylhydroxylamine in an amount
of 6 ml's as an antioxidant for aqueous redox amplifier
solutions as claimed. The examiner has directed our attention
to column 14, line 54 of Wingender.
The examiner has reasoned that the hydroxylamine
component of Nakamura is "found to be an adjacent homologue to
a dimethylhydroxylamine or its salt with R and R in formula1 2
(I) as claimed being the methyl groups" (see page 4 of the
Examiner's Answer). The examiner concludes that, therefore,
it would have been obvious to use dimethylhydroxylamine in
Appeal No. 96-3824
Application No. 08/311,635
6
Nakamura because it is the next adjacent homologue of
Nakamura's hydroxylamine or it would have been obvious to use
Wingender's diethylhydroxylamine antioxidant as an antioxidant
in Nakamura's composition for the purpose and advantages
disclosed by Wingender.
In the first instance, Nakamura does not disclose
hydroxylamine, per se, but hydroxylamine sulfate or
hydrochloride, both salts of hydroxylamine. We also agree
with appellant that the examiner has failed to factually
establish a close enough structural similarity between
appellant's hydroxylamines of formula (I) and the compounds of
Nakamura to trigger the presumption that the routineer would
have been motivated to make appellants' compounds based on
Nakamura's disclosure. We agree with appellant that
hydroxylamine, which contains two primary acidic hydrogen
atoms in the molecule, is not an adjacent homologue of
dimethylhydroxylamine or its salt.
While Wingender is admittedly directed to aqueous redox
amplifier solutions which may include diethylhydroxylamine,
hydrogen peroxide and a buffer, the pH's for the various
compositions disclosed therein are 7.0 (column 14, lines 32
Appeal No. 96-3824
Application No. 08/311,635
7
and 33), 10.6 (column 14, line 62) and 6.0 (column 15, line
8). The examiner has failed to express what would have
motivated the person of ordinary skill in the art to select
appellant's particular ingredients and use them at a pH
ranging from 11 to 12 based on Wingender or Wingender
considered with Nakamura. Indeed, while it appears from the
voluminous prior art cited in this application that
appellant's individual ingredients are, per se, known as
useful additives for redox amplifying solutions in general,
nothing in the record to which our attention has been directed
suggests appellant's particular pH, particularly claimed
ingredients or particular amounts of ingredients.
For all the above reasons, we find the examiner has
failed to make out a prima facie case of obviousness with
respect to the appealed subject matter. Accordingly, it is
unnecessary to discuss the relevance of appellant's alleged
evidence of unexpected or surprising results since evidence of
nonobviousness is only weighed against evidence which
establishes a prima facie case of obviousness.
Appeal No. 96-3824
Application No. 08/311,635
8
The rejection of claims 1 through 5, 7 through 11 and 13
through 20 under 35 U.S.C. § 103 is reversed. The decision of
the examiner is reversed.
REVERSED
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
)
)
ANDREW H. METZ )BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
)INTERFERENCES
)
)
)
JOHN D. SMITH )
Administrative Patent Judge )
Appeal No. 96-3824
Application No. 08/311,635
9
AHM/gjh
Joshua G. Levitt
Eastman Kodak Company
Patent Legal Staff
Rochester, NY 14650-2201