Appeal No. 1995-2781
Application No. 07/804,868
point of between 50 C. and about 130 C., and iso o
incorporated at 5 to 200% by weight of said
hydrophilic binder, and where said thermal solvent
dispersion contains a dispersing aid at a thermal
solvent to dispersing aid weight ratio of 1:0.01 to
1:2.
Appellants and the Examiner appear to agree that it is
appropiate to apply a two way test in assessing the propriety
of this double patenting rejection. In applying this two way
test, the issue is whether application claims 1-16 and 33-49
are obvious over the patent claims 1, 4-16, 18-28 and 31-40,
and also whether the patent claims are obvious over the
application claims. In re Dembiczak, 175 F.3d 994, 1002, 50
USPQ2d 1614, 1619-20 (Fed. Cir. 1999); In re Braat, 937 F.2d
589, 593-94, 19 USPQ2d 1289, 1292-93 (Fed. Cir. 1991).
The crux of the inquiry lies in a comparison of the
claims. In re Borah, 354 F.2d 1009, 1017, 148 USPQ 213, 220
(CCPA 1966). Patent claim 1 is directed to an aqueous-
developable color-photographic material containing a thermal
solvent dispersion which contains a dispersing aid at a
thermal solvent to dispersing aid weight ratio of 1:0.01 to
1:2 while appealed claim 1 provides for aqueous-developable
color-photographic material containing a thermal solvent.
Thus, patent claim 1 differs from appealed claim 1 in that the
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