Ex parte WALLIS et al.

Board of Patent Appeals and Interferences

Jan 13, 1998

07941566 (B.P.A.I. Jan. 13, 1998)

Application for patent filed September 8, 1992. 1
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(2) is not binding precedent of the Board.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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte JULIAN WALLIS, KEVIN P. HALL, STEPHEN NEWMAN
and DIAN E. STEVENSON
________________
Appeal No. 94-3359
Application 07/941,5661
________________
ON BRIEF
________________
Before METZ, WEIFFENBACH and OWENS, 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 12. Claims 13
through 17 stand withdrawn from consideration as claims directed
to the previously non-elected invention pursuant to a requirement
for restriction made by the examiner in Paper Number 5 (April 12,
Appeal No. 94-3359
Application 07/941,566
2
1993). Accordingly, claims 13 through 17 form no issue in this
appeal.
At the eleventh hour in this appeal, namely in his
answer at pages 6, 7 and 11, the examiner for the first time in
the prosecution of this application, informs appellants and this
Board that certain rejections, both formal and substantive, as to
certain claims (claims 5 and 8) are now being withdrawn from
consideration. In part, the basis for the examiner's withdrawal
is said to be the requirement for restriction/election of species
as set forth in the office action mailed on September 7, 1993.
However, careful review of this record makes it plain
that, notwithstanding the so-called restriction requirement set
forth in the office action mailed September 7, 1993 (the final
rejection - Paper Number 10), the examiner has, consistently
throughout the prosecution, rejected each of claims 1 through 12
on both formal and substantive grounds. Indeed, in the final
rejection the examiner rejected claims 1 through 12 under 35 USC
101; 35 USC 112, first paragraph; 35 USC 102; and, 35 USC 103.
It is from said final rejection which applicants noted their
appeal and it is the very rejections set forth in the final
rejection to which appellants have addressed their arguments in
favor of patentability. Moreover, the examiner has expressly
agreed with appellants' statement of the status of the claims on
Appeal No. 94-3359
Application 07/941,566
The polymer represented by formula V is set forth in 2
dependent claim 5.
3
appeal as set forth on page 2 of appellants' brief (see page 1 of
the examiner's answer).
Most significantly, however, there is no adequate
written explanation in the record of the nature of the
requirement for election of species other than the phrase "Mr.
Mark A. Litman orally elects a polymer represented by formula V
with Z being -OH on January 26, 1993 being acknowledged." See
Paper Number 5, page 2. Indeed, at page 2 of Paper Number 5,2
there is set forth a requirement for restriction between three
groups of claims and a requirement for applicants to elect "the
invention to be examined" followed by the statement that:
Other issues have not and will not be
considered before the above restriction
is properly made and resolved.
In paper number 7, applicants elected the invention of Group I
(claims 1 through 12) without traverse. Thereafter, except for
the examiner's repeated reference to an election made on January
26, 1993 (page 5 of Paper Number 8; page 3 of Paper Number 10),
there is no further explanation in the record of the nature of
the election of species.
Additionally, the proper procedure to follow when an
election of species is required and applicants' elected species
Appeal No. 94-3359
Application 07/941,566
4
is not found in the prior art, is to search thereafter a
reasonable number of non-elected species representative of the
generic invention. Suffice it to say that the examiner has both
failed to adequately set forth in writing, on the record, the
nature of the requirement for an election of species and has
failed to follow the proper procedures for examination after
requiring an election of species.
We have not been assisted by appellants' complete
silence on the record on this issue. Specifically, although
appellants were entitled to respond to such new points of
argument as were raised in the various prior office actions and
the examiner's answer, here, appellants chose not to respond to
the examiner's answer in any fashion. Thus, we could take
appellants' silence on the issues of restriction/election of
species and which claims are properly before us as a concession
that the examiner's position is correct. Such a position would
result, however, in the piecemeal administration of justice.
This is not to the say that an examiner is not free to
change his or her mind and withdraw the rejection of a particular
claim or claims from which an appeal has been taken. However,
whenever the examiner determines a previously made rejection to
be unsound or no longer relevant, the record should be clear and
set forth the reasons why the rejection is no longer considered
Appeal No. 94-3359
Application 07/941,566
5
appropriate. See MPEP §1208.02. It is certainly not appropriate
to include a claim in the examiner's statement of the rejection,
as in the heading on page 7 of the examiner's answer, and then
make a statement completely at odds with the statement of the
rejection as on page 7 wherein the examiner concludes "claim 8
containing formula VII being non-elected has not been considered
and searched." This statement is at odds with the record, the
prosecution of the claims and the statement of the rejections
before us.
From all the above, and from the examiner's express
statement at page 7 of his answer, we conclude only that the
examiner has withdrawn claim 5 from the rejection under 35 USC
102(b) or, alternatively, under 35 USC 103, from the disclosure
of Scullard alone or Scullard considered with IBM, Hofman, Henzel
and Schuler. Accordingly, the rejection of claim 5 on the above-
noted grounds forms no issue in this appeal.
THE INVENTION
Appellants' claimed invention is broadly directed to a
black and white photographic element comprising a silver halide
emulsion layer and which element has in said emulsion layer or in
a layer adjacent thereto a substantially non-diffusing polymeric
developer compound having a particular formula. The non-
diffusing polymeric developer compound is able to remain within
Appeal No. 94-3359
Application 07/941,566
6
the emulsion layer of the photographic element because the bulk
of the polymeric moiety renders the developer substantially
insoluble in aqueous alkali, a common activator solution for
silver halide emulsions.
Claim 1, the broadest independent claim before us for
our consideration, is considered to be adequately representative
of the appealed subject matter and reads as follows:
1. A black and white photographic element comprising
as a photosensitive medium a layer of a silver halide emulsion
characterised in that the photosensitive medium comprises in the
same layer or in an adjacent layer thereto a developer comprising
a substantially non-diffusing polymeric compound having a
molecular weight of at least 1000 having as a component part of
its structure a plurality of units having a nucleus of general
formula (I):
(I)
wherein;
each Z independently is a member selected from the
group consisting of -OH and a group which leaves an -OH residue
when contacted with an alkali. (pH $10) at temperatures of
#50EC.
The references of record which are being relied on by
the examiner as evidence of lack of novelty and obviousness are:
Schuler 3,186,970 June 1, 1965
Scullard 3,772,014 November 13, 1973
Hofman et al. (Hofman) 3,847,618 November 12, 1974
Henzel et al. (Henzel) 4,927,744 May 22, 1990
Appeal No. 94-3359
Application 07/941,566
The examiner incorrectly denominates this reference as a3
"British Patent Application" in his answer at page 3. European
Patent Application 0,353,629 is the counterpart to and claims
prior benefit of U.S. Application Serial Number 229,372 which
ultimately issued as the Henzel reference relied on by the
examiner. Thus, the examiner has not separately relied on
European Application Serial Number 0,353,629 and we shall treat
all reference to said application as a reference to British
Patent 1,318,213.
7
British Patent (IBM) 1,318,213 May 23, 1973 3
The appealed claims stand rejected as being
unpatentable:
(1) - Under 35 USC 101 as lacking
utility (claims 1 through 12).

(2) - Under 35 USC 112, first paragraph,
as being based on a disclosure which
fails to disclose how to make certain
compounds within the scope of the claims
(claims 1 through 12).

(3) - Under 35 USC 102(b), as lacking
novelty based on the disclosure of
Scullard (claims 1 through 4 and 6
through 12).

(4) - Under 35 USC 103, over Scullard,
alone, or, alternatively, over Scullard
in view of IBM, Hofman, Henzel and
Schuler (claims 1 through 4 and 6
through 12).
We reverse the rejections under 35 USC 101 and 35 USC
112, first paragraph. We affirm the rejection of claims 1
through 4, 7 and 9 through 12 under 35 USC 102. We affirm the
rejection of claims 1 through 4, 7 and 9 through 12 under 35 USC
103. We reverse the rejection of claims 6(3) and 8 under 35 USC
Appeal No. 94-3359
Application 07/941,566
8
102. We reverse the rejection of claim 8 under 35 USC 103.
OPINION
Under the heading "GROUPING OF CLAIMS" at page 6 of
their supplemental brief on appeal, appellants state that with
respect to the rejection of the claims under 35 USC 102(b) and 35
USC 103: "claims 1-4, 7, and 10-11 shall be grouped together as
depending from claim 1 for patentability"; "claims 5 and 6 shall
be grouped together as depending upon claim 5 for patentability";
and, "claims 8, 9, and 12 shall stand separately, each claim
depending upon its own limitations for patentability under these
rejections." We shall decide the propriety of the rejections
from which an appeal has been taken based on the patentability of
the claims as urged under the "GROUPING OF CLAIMS" heading and to
the extent the particularly grouped claims have been argued with
adequate specificity.
THE PRIOR ART
Schuler discloses a process for preparing useful,
polymeric non-diffusing reducing agents for photographic
emulsions (column 2, lines 57 through 59). The compounds useful
as said reducing agents are polyhydroxyaryl partial acetals of
polyvinyl alcohol polymers and copolymers (column 1, lines 14
through 38). The process entails converting the pendant hydroxy
groups of the aldehyde of the desired polyhydroxyaryl substituent
Appeal No. 94-3359
Application 07/941,566
9
to an acyl derivative which prevents the hydroxyl groups from
entering side reactions during acetal formation (column 1, lines
47 through 56). The acyl moieties serve as protecting groups
which may be removed by alkaline alcoholysis (column 2,lines 18
through 21). The polymers prepared by the process are polyvinyl
alcohol polymers with random units of dihydroxy aromatic acetals
as substituents (column 2, lines 22 through 25).
Scullard discloses that polymers having pendant
resorcinol (1,3-dihydroxy benzene) groups attached thereto may be
used in photographic elements and photographic processes to
provide improved image qualities and which polymers are non-
diffusing (column 1, lines 43 through 53). By non-diffusing,
Scullard intends that for all practical purposes, the polymer
does not migrate or wander through the organic colloid layers
which comprise the photographic elements in which the polymers
are used (column 5, lines 4 through 10). The polymers containing
said pendant resorcinol groups may be incorporated into
multilayer photographic elements (column 1, lines 54 through 65).
The resorcinol-containing polymers may be incorporated into the
photographic elements by any well-known prior art technique and
in any concentration, depending on the intended use (column 4,
lines 25 through 31). The resorcinol-containing polymers may be
located in any layer of a photographic element (column 4, lines
Appeal No. 94-3359
Application 07/941,566
10
39 through 41), and are useful in any photographic element where
it is desired to immobilize an unwanted reaction product or
contaminant (column 5, lines 17 through 20). The resorcinol-
containing polymers may be used in black-and-white or color
photographic elements (column 5, lines 20 through 22). Scullard
discloses and claims photographic elements comprising a silver
halide emulsion layer and at least one layer thereon containing a
polymer having pendant resorcinol groups attached to the polymer
(column 7, lines 52 through 60; claim 1, column 11; claim 10,
column 12).
Hofman discloses a method of producing high contrast
images by exposure and development of a silver halide emulsion
layer on a support material which incorporates hydroquinone as a
developing agent and wherein developing is effected by treatment
with an alkaline development activator (column 2, lines 28
through 36). The hydroquinone developing agent should be in the
same layer as the silver halide or in a layer in contact with the
silver halide (column 3, lines 33 through 43). Use of one or
more silver halide developing agents is disclosed as conventional
(column 1, lines 59 through 61).
Henzel discloses photographic elements comprising a
support having thereon at least one silver halide emulsion layer
and a layer comprising a binder and a solid particle dispersion
Appeal No. 94-3359
Application 07/941,566
11
of a hydroquinone derivative (column 1, line 65 through column 2,
line 2). The particle size of the solid particles range from
0.01 microns to about 10 microns (column 8, lines 39 through 42).
The photographic elements may be black-and-white or color column
9, line 7 through column 11, line 10).
IBM discloses photographic elements comprising a
support having at least one silver halide emulsion layer coated
thereon and which further contains a novolak resin therein (page
2, lines 9 through 30). The resin is prepared by the reaction of
hydroquinone with formaldehyde (page 2, lines 21 through 25).
Preferred molecular weights for the novolak resin are from 300 to
600 but greater or lesser molecular weights may be used (page 2,
lines 53 through 57). The novolak resins act as non-diffusing
developers and image strengtheners (page 2, lines 58 through 61).
Novolak resins having greater molecular weights tend not to
diffuse in the silver halide gelatin emulsion which is an
especially desirable property (page 3, lines 65 through 78).
Novolak resins prepared from catechol are comparable in
performance to the hydroquinone novolak resins (page 3, lines 93
through 106).
THE REJECTIONS UNDER 35 USC 101 AND 112
Although the examiner's statement of the rejections
under 35 USC 101 and 35 USC 112, first paragraph, are not models
Appeal No. 94-3359
Application 07/941,566
12
of clarity, we understand the examiner's position with respect to
the rejections founded on both 35 USC 101 and 35 USC 112 to be
based on the scope of the molecular weight for the "substantially
non-diffusing polymeric" developers embraced by the claims. The
examiner opines that the language "an average molecular weight of
at least 1 x 10 " has no upper limit and therefore embraces3
"polymers or copolymers having millions or hundred millions to an
infinite molecular weight" (page 3 of the answer). The examiner
then concludes that a polymer as claimed but possessing "a
molecular weight of 10 millions or more would be a rock hard
solid which would lose its reactivity of an individual
hydroquinone as a well known silver halide reducing or black-and-
white developing agent in the photographic art." (page 3 of the
answer).
The examiner's separate rejection under 35 USC 112,
first paragraph, is founded on the examiner's theory that
appellants have failed to disclose how to obtain (make) polymeric
developing compounds within the language of the claims and having
"high molecular weight of 100, 1000, 10,000 millions or infinite
amount as broadly claimed." (page 4 of the answer). Additionally,
the examiner considers that the language that "Z" is "the group
consisting of -OH and a group which leaves an -OH residue when
contacted with an alkali (pH$10) at a temperature of #50EC" is
Appeal No. 94-3359
Application 07/941,566
13
not enabled by appellants' disclosure because the term "`alkali'
has been considered as an element such as lithium, sodium or
potassium as broadly claimed and as originally disclosed in the
claims." (page 5 of the answer).
The question of whether or not a claimed invention
lacks utility is a question of fact. Raytheon Co. v. Roper Corp.,
724 F.2d 951, 956, 220 USPQ 592, 596 (Fed. Cir. 1983). A
deficiency under 35 USC 101 also creates a deficiency under 35
112, first paragraph. However, the alleged deficiency under 35
USC 101 must be accompanied by the factual showing necessary to
establish a prima facie case for lack of utility. Here the
examiner has simply speculated as to whether or not certain
polymers bearing the claimed pendant dihydroxy phenyl group would
have been expected to have the utility which appellants assert
they possess. There is certainly no evidence which establishes
that polymers having a molecular weight of "millions or hundred
millions" and bearing the claimed dihydroxy phenyl moieties do
not have the utility which appellants state they possess.
Moreover, assuming the claims do embrace some inoperative
embodiments, it is not the function of the claims to specifically
exclude all possible inoperative substances or ineffective
amounts and proportions. In re Dinh-Nguyen, 492 F.2d 856, 858-
859, 181 USPQ 46, 48 (CCPA 1974). Accordingly, we reverse the
Appeal No. 94-3359
Application 07/941,566
14
rejection under 35 USC 101.
In rejecting the claims under 35 USC 112, first
paragraph, it was the examiner's burden to establish lack of
enablement by compelling reasoning or objective evidence. In re
Strahilevitz, 668 F.2d 1229, 212 USPQ 561 (CCPA 1982); In re
Armbruster, 512 F.2d 676, 185 USPQ 152 (CCPA 1975). Here, the
examiner has neither established by compelling reasoning nor by
presentation of evidence that a person of ordinary skill in this
art would have been unable to practice the claimed invention
without resort to "undue" experimentation. Rather, the examiner
has merely made an assertion, unsupported by any facts in this
record, that certain polymers within the claims and having
certain molecular weights would not function as described by
appellants.
We recognize that the enablement requirement of the
first paragraph of 35 USC 112 requires that there be some
reasonable correlation between the scope of the claims and the
scope of enablement described in the specification. In re Fisher,
427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970). However, it has
been consistently held that the first paragraph of 35 USC 112
requires nothing more than objective enablement. In re
Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971).
In meeting the enablement requirement, an application
Appeal No. 94-3359
Application 07/941,566
15
need not teach, and preferably omits, that which is well-known in
the art. Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d
1367, 1384, 231 USPQ 81, 94 (Fed. Cir. 1986). How such a
teaching is set forth, whether by the use of illustrative
examples or by broad descriptive terminology, is of no importance
since a specification which teaches how to make and use the
invention in terms which correspond in scope to the claims must
be taken as complying with the first paragraph of 35 USC 112
unless there is reason to doubt the objective truth of the
statements relied upon therein for enabling support. Marzocchi
at 439 F.2d 223, 169 USPQ 369.
We hold the examiner has failed to discharge his
initial burden of making out a prima facie case of lack of
enablement. Glaring by its absence in the record is any evidence
supporting the examiner's theories for why appellants' claims are
not enabled by their disclosure. In the absence of any evidence
and in light of the voluminous prior art of record, we are not
persuaded that anything more than routine experimentation would
have been required for the skilled routineer to select, make and
use appropriate polymers within the subject matter claimed by
appellants.
The examiner's separate rejection of the claims under
35 USC 112, first paragraph, as being non-enabled is reversed.
Appeal No. 94-3359
Application 07/941,566
16
The examiner's interpretation of the phrase "a group which leaves
an -OH residue when contacted with an alkali" as meaning
contacting with "an element such as lithium, sodium or potassium"
is simply not a reasonable interpretation of the claims in view
of the state of the art. See for example column 2, lines 18
through 21 of Schuler wherein it is disclosed in part that:
The acyl protecting groups are
preferably removed by alkaline
alcoholysis in an inert atmosphere...
Moreover, at page 7 of appellants' disclosure it is disclosed
that:
Z preferably represents a group which is
cleavable to OH on contact with an
alkali solution, generally having a pH
of at least 10, at temperatures of up to
about 50E.
To suggest that appellants recommend by the above disclosure
adding elemental sodium, lithium or potassium to water is
unreasonable and unpersuasive. Elemental sodium, for example,
decomposes water on contact generating hydrogen and sodium
hydroxide, and, therefore, must be stored under a solvent, such
as mineral oil, which excludes moisture and oxygen. More
importantly, the term "alkali" has been used to denominate
solutions having pH's greater than 7.0. Indeed, "alkali" is
defined in "The Condensed Chemical Dictionary", 10th Edition, at
page 31 as:
Appeal No. 94-3359
Application 07/941,566
17
Any substance which in water solution is
bitter, more or less irritating or
caustic to the skin, turns litmus blue,
and has a pH value greater than 7.0. See
also base; pH; alkali metal.
Accordingly, we find the examiner's interpretation of the
limitation in question to be unreasonable in view appellants'
disclosure, the state of the art and general principles of
chemistry.
THE PRIOR ART REJECTIONS
We shall affirm the examiner's rejection of claims 1
through 4, 7 and 9 through 12 under 35 USC 102(b) as being
anticipated by Scullard. Notwithstanding appellants' argument
that the resorcinol-containing polymers of Scullard are described
at column 2, lines 4 through 9 as not being silver halide
developing compositions, appellants' claims include the compounds
described by Scullard.
In appellants' claim 1, the hydroxy substituents, "Z",
attached to the benzene moiety are floating substituents. That
is, the hydroxy substituents in appellants' claims may be
attached at any of the five available positions, including the 1-
and 3-positions. Accordingly, appellants claims embrace polymers
having attached thereto the 1,3-dihydroxy benzene (resorcinol)
moieties described by Scullard. Appellants drafted their claims
to include 1,3-substituted benzene (resorcinol) moieties and the
Appeal No. 94-3359
Application 07/941,566
18
words used by appellants in their claims to describe their
polymeric compounds' ultimate utility (developers) does not
negate the fact that appellants' claimed 1,3-substituted units
must necessarily have the same properties as the identical units
disclosed in the prior art. We note that appellants do not
assert that their claims do not embrace 1,3-substituted moieties
on the polymer or that they did not intend to claim polymers
bearing 1,3-substituted moieties on the polymeric backbone.
Indeed, claims 5 and 6(5), which claim the 1,2-, and 1,4-
dihydroxysubstituted species are considered to be evidence that
appellants intended to broadly claim their compounds, including
the 1,3-dihydroxy substituted species.
The compounds disclosed by Scullard may be incorporated
in photographic elements, including black-and-white elements
(column 4, lines 25 through 31 and column 5, lines 20 through
22). The resorcinol-containing polymers are described as non-
diffusing (column 1, lines 49 through 52). It is hornbook patent
law that an anticipatory reference does not require any statement
for a particular utility let alone the utility claimed by
applicants so long as what is being claimed is described in the
reference relied on and the reference relied on describes how to
make the subject matter described or it would have been known by
a person of ordinary skill how to make the subject matter
Appeal No. 94-3359
Application 07/941,566
19
described. In re Malagari, 499 F.2d 1297, 1302, 182 USPQ 549,
553 (CCPA 1974); In re Moore, 444 F.2d 572, 579, 170 USPQ 260,
267 (CCPA 1971); In re Hafner, 410 F.2d 1403, 1405, 161 USPQ 783,
785 (CCPA 1969); In re Hack, 245 F.2d 246, 248, 114 USPQ 161, 162
(CCPA 1957); Ex parte Kitamura, 9 USPQ2d 1787, 1788 Footnote [2]
(BPAI 1988). All that is necessary for anticipation is a
reference published or patented more than one year prior to the
date of the application for patent in the United States and which
reference describes the invention claimed by appellants.
Scullard is such a reference.
We have included claims 9 through 12 in our affirmance
of the rejection under 35 USC 102(b) even though appellants have
stated they consider claims 9 and 12 to stand or fall separately.
Nonetheless, each of claims 9 through 12 depend directly on claim
1. Appellants' sole argument for the patentability of claims 9
and 12 is found at pages 14 and 15 of their brief wherein
appellants state:
The patentability of claims 8, 9, and 12
under this rejection are independently
based on upon the same argument
represented immediately above for claims
5 and 6. Each of these claims recites a
particular repeating polymeric unit.
That unit is not shown by Scullard.
We note, however, that claims 9 and 12 require the same repeating
polymeric unit as claim 1 and which polymeric unit is shown by
Appeal No. 94-3359
Application 07/941,566
20
Scullard.
The examiner has expressly withdrawn the rejection of
claim 5 under both 35 USC 102 and 35 USC 103 from consideration
at page 7 of his answer. Claim 6 depends, alternatively, from
either claim 3 or claim 5. To the extent claim 6 depends on
claim 5, that claim, claim 6(5), is considered to be withdrawn by
the examiner from both the rejection under 35 USC 102 and 35 USC
103. Claim 3, however, depends on claim 2 which depends on claim
1. Thus, claim 6(3) claims an element according to claim 3 and
wherein the groups represented by "Z" are in the ortho- or para-
positions. That is, the polymer does not bear a group with a
resorcinol (1,3-dihydroxy benzene) moiety affixed thereto.
Scullard, as we have stated above in our analysis under 35 USC
102, is directed to polymers with pendant resorcinol groups
attached thereto and useful as in photographic elements as non-
diffusing components thereof. Therefore, the rejection of claim
6(3) under 35 USC 102 is reversed.
Claim 8 ultimately depends on claim 1 and describes a
particular polymeric unit not described by Scullard.
Accordingly, claim 8 is not anticipated by Scullard and the
examiner's rejection of that claim is also reversed.
Alternatively, the examiner has rejected the same
claims as he rejected under 35 USC 102(b) but under 35 USC 103
Appeal No. 94-3359
Application 07/941,566
21
over the same reference, Scullard, alone or, taken with any of
IBM, Hoffman, Henzel and Schuler. Because we have affirmed the
rejection of claims 1 through 4, 7 and 9 through 12 under 35 USC
102 as being anticipated by Scullard and because anticipation is
the epitome of obviousness, we shall summarily affirm the
rejection under 35 USC 103 as it applies to claims 1 through 4, 7
and 9 through 12 and only separately address the alternative
rejection of claim 8 under 35 USC 103.
The examiner has not directed our attention to what
disclosure in Scullard would have motivated the person of
ordinary skill in the art to have made the Scullard compounds but
with the polymeric backbone required by claim 8. Neither has the
examiner directed our attention to that portion of any of the
secondary references relied on as evidence that the person of
ordinary skill in the art would have been motivated from the
secondary references to modify Scullard and, thus, obtain
appellants' invention as described in claim 8. Indeed, the
examiner's only specific discussion of the requirements of claim
8 may be found at page 11 of his answer in discussing the
rejection under 35 USC 102(b) wherein he states:
Claim 8 relates to a non elected species
which has not been considered and
searched. See the Office action mailed
on May 28, 1993.
Suffice it to say that examiner has failed to make out a prima
Appeal No. 94-3359
Application 07/941,566
Graham v. Deere, 86 S.Ct. 684, 694, 383 U.S. 1, 17, 148 4
USPQ 459, 467 (1966).
22
facie case of obviousness with respect to the subject matter
described by claim 8. Accordingly, we reverse the examiner's
rejection of claim 8 under 35 USC 103.
REJECTION UNDER 37 CFR § 1.196(b)
Pursuant to our authority under 37 CFR 1.196(b) we
enter the following rejection of appellants' claims 1 through 12
under 35 USC 103, as the subject matter claimed therein by
appellants would have been prima facie obvious to a person of
ordinary skill in the art at the time appellants' invention was
made.
The references of record which are being relied on to
reject appellants' claims are:
Minsk et al. (Minsk) U.S. Patent 2,710,801 6/14/55
British Patent Number 1,318,213 5/23/73 (IBM)
As part of our responsibility to make factual findings
with respect to the scope and content of the prior art and in
order to determine the level of ordinary skill in the relevant
art , we have considered the state of the art as represented by 4
appellants in their specification and at page 4 of their brief as
Appeal No. 94-3359
Application 07/941,566
23
a starting point in our evaluation of whether or not a prima
facie case of obviousness is established by the prior art, as is
our burden.
Claims 1 through 12 are rejected under 35 USC 103 as
the subject matter claimed therein would have been prima facie
obvious to a person of ordinary skill in the art at the time
appellants' invention was made from the combined disclosures of
Minsk and IBM considered with certain admissions in appellants'
specification.
Minsk discloses a method for preventing the formation
of color fog or stain in photographic emulsions (column 1, lines
15 through 17). Color fog or stain in photographic silver halide
emulsions is formed when the developers, reducing agents which
convert the silver halide components to elemental silver, react
in their oxidized form with color-forming components by coupling
therewith in places in the photographic element where no silver
image is produced (column 1, lines 31 through 39). It is also
well-known that the color dyes should be formed only where the
silver halide is reduced to metallic silver by the developers,
thereby oxidizing the developer to a form which couples with the
color-forming agent. Once oxidized, the developer reacts
(couples) immediately with the color former whether a
photographic image is present or not (column 1, lines 39 through
Appeal No. 94-3359
Application 07/941,566
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44). Minsk resolves the aforementioned problems by providing
suitable, non-diffusing reducing agents (developers) in silver
halide emulsion layers containing color couplers. The developers
are non-diffusing, polymeric compounds having recurring units
containing two or more hydroxyl units (column 1, line 69 through
column 3, line 66). The non-diffusing stain or fog inhibitors
may be incorporated directly in gelatin emulsions (column 5,
lines 64 through 71).
IBM discloses photosensitive compositions containing
silver halide and gelatin (page 1, lines 14 through 18). The
photosensitive compositions also contain a thermoplastic novolak
polymer prepared by reaction of formaldehyde and a phenolic
monomeric silver halide developing agent (page 2, lines 9 through
18). A preferred novolak is prepared from formaldehyde and p-
dihydroxybenzene (hydroquinone). Preferred novolaks have a
molecular weight of from 300 to 600 although greater or lesser
molecular weights may be useful (page 2, line 53 through 57).
When added to silver halide emulsions, the novolak was found to
impart both the properties of a non-diffusing developer and an
image strengthener (page 2, lines 58 through 61).
Appellants' broadest claim, claim 1, is directed to a
"black and white" photographic element comprising as the
photosensitive medium a silver halide emulsion layer having in
Appeal No. 94-3359
Application 07/941,566
25
the same layer or in an adjacent layer a developer which is non-
diffusing and which developer bears a plurality of units which
are dihydroxy substituted benzenes (catechol, resorcinol or
hydroquinone). The dihydroxy substituted benzene moieties on the
non-diffusing developer may be pendant groups attached to a
polymeric backbone (claims 1 through 6 and 9 through 12) or the
dihydroxy substituted benzene moieties may be repeating units
which actually form part of the polymeric backbone of the non-
diffusing polymeric developer (claims 7 and 8).
In their specification and at page 4 of their brief,
appellants discuss the various prior art solutions to the problem
of preventing the developer from migrating from the emulsion
layer where it is placed. The prior art resolved this problem
by: using so-called "ballasted" reducing agents; rendering the
"photographically useful" group non-diffusing by crosslinking;
and, by incorporating the developer in the emulsion layer in the
form of a non-diffusing resin, for example. In discussing the
method whereby polymers bearing units having two or more hydroxy
substituents are incorporated into the emulsion layer, appellants
cite and discuss the Minsk reference cited above for the
recognized use of "ballasted" developers in silver halide
emulsions but apparently conclude because Minsk is directed to
silver halide emulsions containing color couplers a person of
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Application 07/941,566
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ordinary skill in the art would not have been motivated to use
the Minsk compounds as "a primary developer for black and white
silver halide photographic materials." We disagree.
There is no doubt but that Minsk discloses the very
same compounds, used as silver halide developers in the Minsk
invention, as appellants claim here as useful for developing
silver halide emulsions. That is, Minsk discloses non-diffusing
developers for incorporation in color photographic silver halide
emulsion layers. For the developer of claim 5 and claim 6(5),
see column 3, lines 29 through 35. For the developer of claims 7
and 8, see column 3, lines 55 through 65.
The only difference between the subject matter claimed
by appellants and the invention described by Minsk is that
appellants claim a silver halide emulsion photographic element
for use in black and white photography. Nonetheless, the
fundamental chemistry involved in the development of photographic
images by silver halide emulsion technology is the same for black
and white photography and color photography - the developer
reduces silver halide to elemental silver leaving a latent image
and the developer, thus, becomes oxidized.
We are satisfied that a person of ordinary skill in the
art knowing from the Minsk disclosure that developers may be
anchored in the emulsion layer where they are placed by using
Appeal No. 94-3359
Application 07/941,566
27
polymeric non-diffusing developers and knowing from Minsk that
the problem of stray fog or stain will be abated by the use of
said polymeric non-diffusing developers would have understood
that anchoring the developers in the emulsion layer of a black
and white photographic element would maintain the developer in
the emulsion layer where it is placed. Thus, developers so-
anchored would be prevented from being washed away by alkaline
activator solution. That the reason provided by Minsk for using
polymeric non-diffusing developers is different than appellants'
reason for using the same polymeric non-diffusing developers does
not negate the prima facie case of obviousness.
To the extent that Minsk does not disclose the
molecular weight for the polymer recited in appellants' claim 10,
we note that IBM clearly indicates that higher molecular weight
non-diffusing developers tend not to diffuse from the emulsion
layer compared with lower molecular weight developers. Thus, the
skilled artisan would have been motivated to use higher rather
than lower molecular weight polymers. Moreover, appellants have
repeatedly directed our attention to the Minsk patent in their
specification as prior art which would enable the person of
ordinary skill in the art to make and use the polymeric compounds
claimed by appellants in their invention. See, for example,
appellants specification at: page 4 line 37 through page 5 line
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Application 07/941,566
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15; page 10, lines 31 and 32; and, page 10, line 33 through page
11, line 2.
Therefore, it is apparent that appellants' claimed
developers are, per se, well-known compounds in the silver halide
emulsion art and, accordingly, the use of developers having the
claimed molecular weight would have been prima facie obvious.
Moreover, the limitations in claim 10 as to particle size and in
claim 11 as to the amount of developer used are directed to what
we consider to be so-called "result effective" variables, the
optimization of which have been held to be entirely within the
purview of routine experimentation and selection by the ordinary
routineer in this art. In re Boesch, 617 F.2d 272, 205 USPQ 215
(CCPA 1980). The use of auxiliary developers in a silver halide
emulsion as required by claim 12 is a notoriously well-known
expedient in this art as conceded by appellants in their
specification at page 16, lines 2 through 9 and page 17, lines 1
and 2.
Claim 9 is rejected under 35 USC 112, second and fourth
paragraphs. Claim 9 is a dependent claim which depends on claim
1. As a dependent claim it must, therefore, "set forth and then
specify a further limitation of the subject matter claimed" in
the independent claim from which it depends. Claim 9 recites
that the phenyl ring recited in claim 1 may have on the ring "one
Appeal No. 94-3359
Application 07/941,566
29
or more" other substitutents selected from a group of recited
substituents. However, while claim 1 is a "comprising" claim and
is, thus, open to the inclusion of other ingredients, the
compound of formula I in claim 1 does not recite any
substitutents except for the two "floating" hydroxyl units. The
remaining available positions in the compound depicted by claim 1
must be occupied by hydrogens. Accordingly, the limitation in
claim 9 is understood by us not to further limit the dihydroxy
substituted benzenes claimed but is a claim to an entirely
different compound or class of compounds than claimed in claim 1.
Thus, claim 9 fails to further limit the subject matter of claim
1 and by, definition raises an unreasonable degree of certainty
with respect to the scope of what appellants intend to claim in
claim 9 in contravention of the requirements of 35 USC 112,
second paragraph.
The decision of the examiner rejecting claims 1 through
12 under 35 USC 101 and 35 USC 112, first paragraph is REVERSED.
The decision of the examiner rejecting claims 1 through 4, 7 and
9 through 12 under 35 USC 102 and 35 USC 103 is AFFIRMED. The
rejection of claims 6(3) and 8 under 35 USC 102 and 35 USC 103 is
REVERSED. We have entered new grounds of rejection.
Appeal No. 94-3359
Application 07/941,566
30
In addition to affirming the examiner’s rejection of
one or more claims, this decision contains a new ground of
rejection pursuant to 37 CFR § 1.196(b)(amended effective Dec. 1,
1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10,
1997), 1203 Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21,
1997)). 37 CFR § 1.196(b) provides, “A new ground of rejection
shall not be considered final for purposes of judicial review.”
Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellant may file a single request
for rehearing within two months from the
date of the original decision . . . .
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of proceedings (37 CFR
§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment
of the claims so rejected or a showing
of facts relating to the claims so
rejected, or both, and have the matter
reconsidered by the examiner, in which
event the application will be remanded
to the examiner. . . .
(2) Request that the application be
reheard under § 1.197(b) by the Board of
Patent Appeals and Interferences upon
the same record. . . .
Appeal No. 94-3359
Application 07/941,566
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Should the appellant elect to prosecute further before
the Primary Examiner pursuant to 37 CFR § 1.196(b)(1), in order
to preserve the right to seek review under 35 U.S.C. §§ 141 or
145 with respect to the affirmed rejection, the effective date of
the affirmance is deferred until conclusion of the prosecution
before the examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If the appellant elects prosecution before the examiner
and this does not result in allowance of the application,
abandonment or a second appeal, this case should be returned to
the Board of Patent Appeals and Interferences for final action on
the affirmed rejection, including any timely request for
reconsideration thereof.
Appeal No. 94-3359
Application 07/941,566
32
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART (196B)
ANDREW H. METZ )
Administrative Patent Judge)
)
)
)
CAMERON WEIFFENBACH ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
TERRY J. OWENS )
Administrative Patent Judge)
)
Appeal No. 94-3359
Application 07/941,566
33
3M COMPANY
OFFICE OF PATENT COUNSEL
P.O. BOX 33427
ST. PAUL, MN 55133