Ex Parte Koide

Board of Patent Appeals and Interferences

Jan 20, 2004

09794362 (B.P.A.I. Jan. 20, 2004)

1 Paul Lieberman, Administrative Patent Judge, who
participated in the oral hearing for this appeal, is now retired.
Therefore, Thomas A. Waltz, Administrative Patent Judge, has been
added to the panel for participation in the subject decision.
Reargument is not required. See In re Bose Corp., 772 F.2d 866,
869, 227 USPQ 1, 4 (Fed. Cir. 1985).
The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte TOMOYUKI KOIDE
____________
Appeal No. 2003-0500
Application No. 09/794,362
____________
HEARD: November 18, 2003
____________
Before WALTZ1, KRATZ and JEFFREY T. SMITH, Administrative Patent
Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's refusal to
allow claims 1-5 and 7-15, which are all of the claims pending in
this application.
BACKGROUND
Appellant’s invention relates to a color photographic light-
sensitive material comprising a silver halide emulsion including
Appeal No. 2003-0500
Application No. 09/794,362
Page 2
specified tabular silver halide grains and a tellurium sensitizer
as claimed. Appellant states that “[t]he claims all stand
together for the purposes of this appeal” (brief, page 6).
Accordingly, we select claim 1 as the representative claim on
which we shall decide this appeal. Claim 1 is reproduced below.
1. A silver halide color photographic light-sensitive
material comprising, coated on a support, a photographic
structural layer that comprises at least one photographic
light-sensitive layer containing a light-sensitive silver
halide, a compound that forms a dye by a coupling reaction
with a oxidized product of a developing agent, and a binder,
wherein at least one photographic light-sensitive layer
of the light-sensitive material contains a silver halide
emulsion that comprises tabular silver halide grains having
principal faces composed of (lll) planes, an average
equivalent circle diameter of a least 0.70 µm, and an
average thickness of less that 0.20 µm, and the silver
halide of the emulsion is chemically sensitized by a
tellurium sensitizer,
wherein the tellurium sensitizer is a compound of formula
(III)
wherein, R31 and R32 each represent -(C=Y’)-R33; R33 represents
NR34(R35); Y’ represents an oxygen atom; R34 and R35 each represent
a hydrogen atom, an aliphatic group, an aromatic group, or a
heterocylic group and may bond together to form a ring; and n
denotes 1 or 2.
Appeal No. 2003-0500
Application No. 09/794,362
Page 3
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Kashi et al. (Kashi) 5,561,033 Oct. 01, 1996
Ito et al. (Ito) 5,985,508 Nov. 16, 1999
Claims 1-5 and 7-15 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Kashi in view of Ito.
We refer to the brief and reply brief and to the final
rejection and the answer for a complete exposition of the
opposing viewpoints expressed by appellant and the examiner
concerning the issues before us on this appeal.
OPINION
Having carefully considered each of appellant’s arguments
set forth in the brief and reply brief, appellant has not
persuaded us of reversible error on the part of the examiner.
Accordingly, we will affirm the examiner’s rejection for
substantially the reasons set forth by the examiner in the final
rejection and the answer.
The examiner has found that Kashi discloses a photographic
material that corresponds to the material called for by
appellant’s representative claim 1 but for a difference in the
particular tellurium sensitizer employed. See page 2 of the
final rejection and the portions of Kashi referred to therein by
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Application No. 09/794,362
Page 4
2 As pointed out by the examiner in the final rejection, the
formula VIII and IX tellurium compounds of Ito correspond to
Kashi’s formula I and II tellurium compounds and the formula X
tellurium compounds of Ito correspond to appellant’s claimed
tellurium compounds of formula III.
the examiner. Moreover, the examiner has determined that Ito
discloses the interchangeableness of tellurium compounds that
correspond to those required by appellant’s representative claim
with tellurium compounds that correspond to those employed by
Kashi for the purpose of sensitizing silver halide grains. See
page 2 of the final rejection and the portions of Ito referred to
by the examiner therein. Appellant does not contest those
determinations of the examiner in the briefs.
Based on those unchallenged factual findings of the
examiner, we agree with the examiner’s determination that the
combined teachings of Kashi and Ito would have rendered the use
of tellurium compounds corresponding to Formula X of Ito as a
replacement for or addition to the tellurium compounds of Formula
I or II of Kashi prima facie obvious to one of ordinary skill in
the art with a reasonable expectation of success in sensitizing
the silver halide grains of Kashi in so doing.2
Appellant notes that Ito discloses no additional preference
for the compounds of their formula X over the compounds of their
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Application No. 09/794,362
Page 5
formula VIII or IX. Appellant argues against the examiner’s
obviousness conclusion based on an expected rough functional
equivalency of the formula VIII, IX and X compounds of Ito
principally by maintaining that their specification and a
declaration of the named inventor, Mr. Tomoyuki Koide, that is of
record, provide evidence of unexpected results for their formula
III compounds that correspond to Ito’s formula X compounds. A
copy of the declaration accompanies the briefs. Appellant
asserts that the furnished evidence overcomes any prima facie
case of obviousness (brief, pages 7-9 and reply brief) that is
made out by the examiner based on the applied references’
teaching of the interchangeableness of the formula VIII, IX and X
compounds of Ito as sensitizers in Kashi.
We do not find appellant’s evidence sufficient to outweigh
the evidence of obviousness relied upon by the examiner. In this
regard, we note that a review of representative appealed claim 1
reveals that a variety of tellurium compounds are included in the
scope of representative claim 1, including tellurium compounds as
shown at page 15, line 18 of appellant’s specification, as
amended in the amendment filed April 05, 2002. Yet, the
specification and declaration only furnish test results for
three tellurium compounds (Koide declaration, page 3) within the
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Application No. 09/794,362
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scope of the broad class of tellurium compounds that
representative claim 1 is inclusive of.
Appellant has not furnished any test results for tellurium
compounds within the claimed formula wherein n = 2. Nor do the
furnished test results establish the effect of varying other
additives and parameters that may be used in photographic
materials that are within the scope of the representative
appealed claim. For example, representative claim 1 is open to
any iodide content, grains that may or may not have dislocation
lines and using any percentage of the total projected area of all
grains that is occupied by tabular grains. Yet, the tested
examples employed methods of preparation that resulted in
particular amounts of iodide content (about 3 mole percent) and
relatively high tabular grain area percentage ratios and a number
of dislocation lines in the tabular grains. See, e.g., pages 21-
27 and Example 1 of appellant’s specification. We note that
applicant/declarant has not offered a convincing line of
reasoning explaining why one of ordinary skill in the art would
expect substantially the same results with the multitude of
alternative compositions that are embraced by the claims as with
the tested compounds.
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Page 7
The question as to whether unexpected advantages have been
demonstrated for the claimed subject matter is a factual
question. See In re Johnson, 747 F.2d 1456, 1460, 223 USPQ 1260,
1263 (Fed. Cir. 1984). Thus, it is incumbent upon appellant to
supply the factual basis to rebut the prima facie case of
obviousness established by the examiner. See, e.g., In re
Klosak, 455 F.2d 1077, 1080, 173 USPQ 14, 16 (CCPA 1972).
Appellant, however, does not provide an adequate explanation
regarding the factual showing in the specification and
declaration of record referred to in the briefs to support a
conclusion of unexpected advantages for the reasons outlined
above.
Indeed, appellant has not fairly established that the
results reported represent truly unexpected results for any of
the tested compounds rather than expected normal variations for
different tellurium compounds within the genus taught by the
applied prior art, much less unexpected results reasonably co-
extensive with the scope of the claimed process of representative
claim 1. We note, for example, that the declaration table B
shows an improved sensitivity of 120 for appellant’s example 112
for the 11th layer and an improved sensitivity of 117 for
compound 13 of Kashi for the 11th layer. Appellant has not
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Application No. 09/794,362
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explained how that slightly different sensitivity represents an
unexpected result given the variation in improved sensitivities
displayed in the tables for the limited examples presented. In
this regard, appellant’s position that the tests establish
unexpectedly improved results is not persuasively explained or
substantiated on this record by the conclusory statements in the
declaration.
Also, appellant has not shown that the samples prepared for
comparison using compounds 7, 12, 13, 23 and 30 of Kashi in the
declaration represent the closest prior art described in Kashi.
Indeed, it is not clear how a fair comparison can be made
considering the numerous variables involved in the specification
and declaration tests and the breadth of the representative
claim.
Hence, we are not satisfied that the evidence of record that
is offered for comparison, as discussed in the briefs,
demonstrates results that are truly unexpected and commensurate
in scope with the claims. Nor has appellant satisfied their
burden of explaining how the results reported in those limited
samples presented can be extrapolated therefrom so as to be
reasonably guaranteed as attainable through practicing the
invention as broadly claimed. It is well established that the
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Page 9
evidence relied on to establish unobviousness must be
commensurate in scope with the claimed subject matter. See In re
Kerkhoven, 626 F.2d 846, 851, 205 USPQ 1069, 1072-73 (CCPA 1980)
and In re Clemens, 622 F.2d 1029, 1035, 206 USPQ 289, 296 (CCPA
1980).
Under the circumstances recounted above, it is our
determination that the evidence of record for and against a
conclusion of obviousness, reconsidered in light of the
respective arguments and evidence advanced by appellant and the
examiner, on balance, weighs most heavily in favor of an
obviousness conclusion with respect to the rejection under
consideration. Accordingly, we shall sustain the examiner's
§ 103 rejection.
CONCLUSION
The decision of the examiner to reject the appealed claims
under 35 U.S.C. § 103 as being unpatentable over Kashi in view of
Ito is affirmed.
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Application No. 09/794,362
Page 10
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
Thomas A. Waltz )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PETER F. KRATZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )
PFK/sld
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Page 11
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