Ex parte TWIST

Board of Patent Appeals and Interferences

Sep 17, 1999

08317977 (B.P.A.I. Sep. 17, 1999)

Application for patent filed October 4, 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journal and (2) is not binding precedent of the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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte PETER J. TWIST
________________
Appeal No. 1996-1675
Application 08/317,9771
________________
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 10
and 12 through 18, all the claims remaining in this
Appeal No. 96-1675
Application No. 08/317,977
Appellant's brief includes claim 6 in the appendix, 2
"Claims on Appeal". Nevertheless, claim 6 was canceled by
appellant in Paper Number 4. Accordingly, claim 6 forms no
issue in this appeal.
2
application.2
Although appellant originally requested an oral hearing
in this appeal (Paper Number 17), appellant has now waived his
request for oral hearing (Paper Number 19). Accordingly, we
shall decide the issues before us based solely on the
arguments in appellant's brief and reply brief (Paper Numbers
12 and 14) and the examiner's answer (Paper Number 13) and the
examiner's response to appellants' reply brief, such as it is
(Paper Number 16).
THE INVENTION
The claimed invention is directed to aqueous compositions
useful in color photography. The compositions are said to be
useful as redox amplifiers and comprise, in particular amounts
and at a particular pH, a color developing agent and hydrogen
peroxide or a compound which provides hydrogen peroxide and an
hydroxylamine or salt thereof. Appellant also claims the
Appeal No. 96-1675
Application No. 08/317,977
3
method of developing an imagewise exposed color photographic
element by using appellant's compositions described above.
Claims 1 and 12 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 hydroxylamine or a salt thereof wherein
the concentration ranges are:

hydrogen peroxide from 0.5 to 10 ml/l (as
30% w/w solution),

hydroxylamine or a salt thereof from
0.25 to 5.5 g/l (as hydroxylamine sulphate), and

wherein the pH is in the range
of from 11 to 12.
12. A method for
processing an imagewise exposed color 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
hydroxylamine or a salt thereof wherein the
concentration ranges are:

hydrogen peroxide from 0.5 to 10 ml/l (as 30%
w/w solution),

hydroxylamine or a salt thereof from 0.25
to 5.5 g/l (as hydroxylamine sulphate), and

wherein the pH is in the range
of from 11 to 12.
The references of record which are being relied on by the
Appeal No. 96-1675
Application No. 08/317,977
4
examiner as evidence of obviousness are:
Nakamura et al. (Nakamura) 4,414,305 November 8,
1983
Iwano 4,954,425 September 4,
1990
Claims 1 through 5, 7 through 10 and 12 through 18 stand
rejected under 35 U.S.C. § 103 as being unpatentable from the
disclosure of Nakamura or Nakamura considered with Iwano. We
affirm.
OPINION
Our analysis of the issues presented for our
determination begins with an analysis of appellant's claimed
subject matter. As so-called "comprising" claims, the
appealed claims do not exclude either unrecited or even
undisclosed ingredients or steps. In re Baxter, 656 F.2d 679,
686, 210 USPQ 795, 802 (CCPA 1981). Accordingly, the claims
embrace, but are not limited to, aqueous compositions which
include an unidentified "colour developing agent", hydrogen
peroxide or a compound which provides hydrogen peroxide and
hydroxylamine or a salt thereof and wherein the peroxide or
peroxide forming compound and the hydroxylamine or salt
thereof are present in particular amounts. The pH of the
aqueous compositions is in the range of from 11 to 12.
Appeal No. 96-1675
Application No. 08/317,977
5
Nakamura discloses aqueous compositions useful for
developing imagewise exposed silver halide color photographic
materials. The solution, denominated a "mono-bath type
intensifying developing solution", includes hydrogen peroxide
or a compound capable of releasing hydrogen peroxide and a
color developing agent (column 3, lines 44 through 53). The
ingredients which make up the developing solution are well-
known and include buffering agents (column 12, lines 3 through
25); and, stabilizers for the peroxide (column 12, lines 26
through 48). The pH of the solution is within a range of from
7 to 14, preferably between 8 and 13 (column 12, lines 58
through 63). Hydroxylamine sulfate may be further added to the
solution (column 13, lines 17 through 19). The intensifying
solutions may contain a variety of other ingredients,
including at least one developing agent, and other compounds
known as components for developing solutions (column 17, line
29 through column 22, line 31). Example 1 describes an aqueous
developing solution including hydroxylamine sulfate at a pH of
10.1 and an aqueous developing intensifying solution including
hydrogen peroxide and a buffering agent at a pH of 11.0.
Example 3 discloses an aqueous developing intensifying
Appeal No. 96-1675
Application No. 08/317,977
6
solution including a buffer and a hydrogen peroxide at a pH of
11.0.
Iwano discloses an aqueous monobath development-
intensifying solution containing hydrogen peroxide or a
compound which releases hydrogen peroxide and a color
developing agent (column 3, lines 9 through 23; column 5,
lines 64 through 68). The aqueous solution may be used in any
one of known systems useful for performing monobath type
color-intensifying processing (column 4, lines 49 through 54)
and include coating development methods where a first solution
containing a color-developing agent and second solution
containing hydrogen peroxide or a compound which releases
hydrogen peroxide may be used separately successively or the
first and second solutions may be mixed to form a single
solution followed by application of the single solution
(column 5, lines 21 through 29). The pH of the monobath
development-intensifying solution is 9 or higher, preferably
from 10 to 12 (column 5, lines 61 through 63). Hydroxylamine
sulfate is disclosed as an additive which may be further
included in the development-intensifier solution (column 12,
lines 3 through 5). A variety of other additives may be
Appeal No. 96-1675
Application No. 08/317,977
7
included in the aqueous compositions (column 13, line 42
through column 15, line 23), including buffering agents
(column 15, lines 1 through 9). A developing intensifier
including hydrogen peroxide, a buffering agent and having a pH
of 11.0 is disclosed at column 18, lines 14 through 68 and
column 20, lines 58 through 68.
We agree with the examiner's conclusion that Nakamura is
evidence that the combination of a color developing agent,
hydrogen peroxide and hydroxylamine sulfate is suggested by
and therefore obvious from the disclosure of Nakamura alone
or, Nakamura considered with Iwano. As specifically noted by
the examiner, Nakamura discloses in two examples (Examples 1
and 3) an aqueous composition including hydrogen peroxide, a
color developer and a buffering agent. The pH in Examples 1
and 3 of the developing-intensifying solution is 11.0. In
light of Nakamura's express disclosure that compounds which
make up known developing solutions may be added to the
intensifying-developing solution and because hydroxylamine
sulfate is specifically disclosed as a compound which may be
further added to the aqueous solution, indeed it is present in
both Examples 1 and 3, the person of ordinary skill in the art
Appeal No. 96-1675
Application No. 08/317,977
8
would have been motivated to add hydroxylamine sulfate to the
intensifying-developer solution. The buffering agent would, by
definition, be expected to maintain the pH of the
intensifying-developer solution at 11.0, even with the further
addition of hydroxylamine sulfate. Accordingly, there would
have been a reasonable expectation of obtaining the pH claimed
by appellant for his composition when following the express
disclosure of Nakamura.
Further, Iwano expressly discloses that it is
conventional in the art to combine color developer solutions
with peroxide solutions to form a single solution for
developing images. Accordingly, Iwano provides further
motivation for combining the color developing solutions from
Examples 1 and 3 of Nakamura with the developing- intensifying
solutions in Examples 1 and 3 of Nakamura. Again, the
presence of a buffering agent in the developing-intensifying
solution would have provided a reasonable expectation to the
routineer of obtaining a pH of 11.0 after the two solutions
were combined.
Accordingly, for all the above reasons, we conclude that
the examiner has established by a preponderance of evidence
Appeal No. 96-1675
Application No. 08/317,977
9
that the appealed subject matter would have been prima facie
obvious to a person of ordinary skill in the art at the time
appellant's invention was made.
Having concluded that the examiner has made out a prima
facie case of obviousness with respect to the appealed subject
matter, it is necessary for us to consider appellants'
rebuttal evidence and to reconsider the prima facie case anew
in light of all the evidence. In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
Appellant's evidence of non-obviousness comprises the
examples in his specification and, more particularly, Example
5 on pages 14 through 16 of the specification. Appellant
urges that the data therein establish the criticality of the
pH in appellant's compositions and the critical relationship
between hydroxylamine and hydrogen peroxide at a "critical
pH." (see pages 4 and 5 of the reply brief).
Appellant, as the party asserting the claimed invention
yields unexpected or improved results compared to the prior
art, bears the burden of establishing the comparison is truly
probative and that the argued results in the declaration are
indeed unexpected or improved. In re Klosak, 455 F.2d 1077,
Appeal No. 96-1675
Application No. 08/317,977
10
1080, 173 USPQ 14, 16 (CCPA 1972). In re Hoch, 428 F.2d 1341,
1343, 1344, 166 USPQ 406, 409 (CCPA 1970).
In submitting evidence asserted to establish unexpected
or improved results, there is also a burden on the party
submitting the evidence to indicate how the proposed
comparison claimed to represent their claimed invention is
considered to relate to the examples intended to represent the
prior art and, particularly, how the examples said to be
representative of the prior art do, in fact, represent the
scope of the prior art. See In re Borkowski, 505 F.2d 713,
718, 719, 184 USPQ 29, 33 (CCPA 1974); In re Goodman, 476 F.2d
1365, 1369, 177 USPQ 574, 577 (CCPA 1973). This appellant has
not done concerning the specification examples.
The data in Table 9 at page 15 of the specification is
described at page 14, lines 17 and 18 as being "based on DA4"
but "made up with different hydroxylamine levels." The
ingredients which make up "DA4" may be found at pages 13 and
14 of the specification. Although it would not be illogical
for us to presume from said disclosure that the compositions
Appeal No. 96-1675
Application No. 08/317,977
11
set forth in Table 9 are identical to the composition of DA4
except for the amount of hydroxylamine sulfate and peroxide,
that information is simply not set forth in appellant's
specification. Likewise, although it would not be illogical
for us to presume that each composition set forth in Table 9
which contains hydroxylamine sulfate has a pH of between 11
and 12 as required by the claims on appeal based on the
presence in DA4 of a buffering agent, no pH's are set forth in
Table 9 for any of the compositions. Since appellant's
broadly disclosed pH range is from 10.5 to 12 (see page 3 of
the specification, lines 5 through 7 and line 20), it is also
possible that the pH's for the compositions in Table 9 are
outside the claimed range of from 11 to 12. Nevertheless, as
we have stated above, it is appellant's burden to explain how
the data relied on as evidence of unexpected or surprising
results is representative both of the scope of the prior art
to which it is to be compared and the scope of the subject
claimed by appellant. Appellant has simply not met his burden
of persuasion.
Moreover, even assuming, arguendo, that the comparison
being suggested were not subject to different interpretations,
Appeal No. 96-1675
Application No. 08/317,977
12
because of the scope of appellants' claims, the showing in the
specification as filed is inadequate to overcome the prior art
rejection because it is not representative of the scope of
appellant's claims or the prior art. No claim on appeal is
limited to the combination of the specific ingredients or
steps described in Example 5 from the specification.
Moreover, the example which is said to represent the prior art
is not adequately set forth.
We have not overlooked the material submitted with
appellant's brief and discussed at pages 16 through 20 of the
main brief and pages 7 and 8 of the reply brief. However, 37
C.F.R. § 1.195 does not permit the submission of additional
evidence after an appeal has been taken unless accompanied by
a showing of good and sufficient reasons why the material was
not earlier presented. No such showing of "good and
sufficient reasons" is of record. Accordingly, we have not
considered the James textbook for any reason in this appeal.
We have reconsidered the prima facie case anew in light
of all the evidence. In re Piasecki, 745 F.2d 1468, 1472, 223
USPQ 785, 788 (Fed. Cir. 1984). However, for the reasons
expressed above, we find the evidence from the specification
Appeal No. 96-1675
Application No. 08/317,977
13
to be inadequate to overcome the prima facie case.
Accordingly, the decision of the examiner is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 C.F.R. §
1.136(a).
The decision of the examiner is AFFIRMED.
AFFIRMED
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
)
)
ANDREW H. METZ )BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
)INTERFERENCES
)
)
)
JOHN D. SMITH )
Administrative Patent Judge )
AHM/gjh
Appeal No. 96-1675
Application No. 08/317,977
14
Joshua G. Levitt
Eastman Kodak Company
Patent Legal Staff
Rochester, NY 14650-2201