Appeal No. 1997-3361
Application No. 08/554,939
conclusion of “anticipation.”5 This, of course, is
impermissible. Arkley, 455 F.2d at 587, 172 USPQ at 526.
We therefore reverse the examiner’s rejection under 35
U.S.C. § 102 of claims 1, 7, 8, and 9 as anticipated by Kojima
‘370.
However, the examiner’s rejections under 35 U.S.C. § 103
stand on different footing. With respect to appealed claim 1, we
note that “picking and choosing may be entirely proper ” in the
context of a §103 obviousness rejection. Id.
As discussed above, Kojima ‘370 describes a method of
processing an imagewise exposed silver halide color photographic
material, said photographic material comprising a support having
5 The examiner points out that the “molar ratio of 1/0.05
to 1/0.30” as recited in appealed claim 1 “is not matched with
any of the proportions in the claims. ” (Examiner’s answer, p.
6.) Although the examiner has not rejected the appealed claims
under 35 U.S.C. § 112, ¶2, the examiner’s concern appears to be
based on an inconsistency between the claimed molar ratio and the
recited ranges of amounts for the compound of formula (I) and the
thiosulfate. We observe, for example, that certain amounts for
the compound of formula (I) (e.g. “about 0.001” mol/liter as
recited in appealed claim 1) can not be reconciled with the
recited amounts for the thiosulfate and the recited molar ratio,
because the minimum amount for the thiosulfate is 0.3 mol/liter
and the maximum molar ratio is 1/0.05 (i.e., 20). Thus, it is
unclear which limitation (i.e., the molar ratio or the recited
range of amounts) should control the metes and bounds of the
claim. In the event of further prosecution, we trust that the
appellants and the examiner will take appropriate actions to
ensure definiteness of claim language in compliance with 35
U.S.C. § 112, ¶2.
8
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