Appeal No. 1997-3361
Application No. 08/554,939
those in the applied prior art. In this regard, it is well
settled that a claimed invention is rendered prima facie obvious
when a range recited in the claim overlaps or touches the range
disclosed in the prior art. In re Geisler, 116 F.3d 1465, 1469,
43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Woodruff, 919 F.2d
1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990); In re
Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
The appellants argue that Kojima ‘370 “fails to recognize
the unexpected effects on fixing speed and resistance to fading
caused by light which are provided by a thiosulfate radical in
combination with a meso-ionic compound of formula (I). ” (Appeal
brief, pages 12-13.) To support this allegation, the appellants
refer to tests 01-05 as described on pages 70-75 of the present
specification. However, we share the examiner’s view that the
appellants’ experimental data are insufficient to rebut the prima
facie case of obviousness. In particular, the showing is limited
to methods using (i) only one set of specific processing
conditions (specification, page 70), (ii) one type of a specific
photographic material made of specific coatings and layers, and
(iii) a fixing bath containing 1.20 to 1.40 mol/l of ammonium
sulfate. By contrast, appealed claims 1 and 16 are not so
limited. Appealed claim 1 encompasses any photographic
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