Appeal No. 1997-1414
Application 08/406,706
Accordingly, “an infrared spectrally sensitive” photographic element comprising a
silver halide emulsion must necessarily include a specific type of sensitizing dye which
extends the natural sensitivity of the silver halide grains to the infrared region of the
electromagnetic spectrum. Therefore, we find that the words “infrared spectrally
sensitized” do more than merely state the purpose or the intended use of the invention and
thus provide further positive limitations to what is being claimed by breathing “life and
meaning” into the claim.
B.
I. 35 U.S.C. REJECTION UNDER 102(b) over Kretchman
Anticipation within 35 U.S.C. § 102 is established only when a single prior art
reference discloses, expressly, or under the principles of inherency, each and every
element of a claimed invention as well as disclosing structure which is capable of
performing the recited functional limitations. RCA Corp. v. Applied Digital Data Sys., Inc. ,
730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984). Note also W.L. Gore and
Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ 303, 313 (Fed. Cir. 1983),
cert. denied, 469 U.S. 851 (1984); and Kalman v. Kimberly-Clark Corp., 713 F.2d 760,
772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026 1984. The PTO
has the burden, via the examiner, to establish anticipation. See In re Spada, 911 F.2d
705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990).
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