Appeal No. 94-3359
Application 07/941,566
15; page 10, lines 31 and 32; and, page 10, line 33 through page
11, line 2.
Therefore, it is apparent that appellants' claimed
developers are, per se, well-known compounds in the silver halide
emulsion art and, accordingly, the use of developers having the
claimed molecular weight would have been prima facie obvious.
Moreover, the limitations in claim 10 as to particle size and in
claim 11 as to the amount of developer used are directed to what
we consider to be so-called "result effective" variables, the
optimization of which have been held to be entirely within the
purview of routine experimentation and selection by the ordinary
routineer in this art. In re Boesch, 617 F.2d 272, 205 USPQ 215
(CCPA 1980). The use of auxiliary developers in a silver halide
emulsion as required by claim 12 is a notoriously well-known
expedient in this art as conceded by appellants in their
specification at page 16, lines 2 through 9 and page 17, lines 1
and 2.
Claim 9 is rejected under 35 USC 112, second and fourth
paragraphs. Claim 9 is a dependent claim which depends on claim
1. As a dependent claim it must, therefore, "set forth and then
specify a further limitation of the subject matter claimed" in
the independent claim from which it depends. Claim 9 recites
that the phenyl ring recited in claim 1 may have on the ring "one
28
Page: Previous 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33 Next
Last modified: November 3, 2007