Appeal No. 1997-1414
Application 08/406,706
Kretchman teaches a photographic element which comprises a spectrally
sensitized silver halide gelatin emulsion comprising an anthraquinone compound in an
amount of 1 to 100 mg per mole of silver halide (column 1, lines 20-25;column 2, lines 47-
51: column 3, lines 12-13; and column 4, lines 68-71). Even though Kretchman does not
disclose the use of an infrared sensitized dye in his emulsion, the examiner urges that
Kretchman is an anticipation because the prior art composition is similar or identical to
that claimed and the words “infrared spectrally sensitized” in the preamble do not provide
much weight.
As noted supra, the words “infrared spectrally sensitized” provide further limitations
to the claim requiring the presence of an infrared sensitizing dye. The examiner, having
given no weight to these words, has failed to sustain his burden of establishing that
Kretchman discloses each and every element of the claimed invention. Accordingly, we
reverse this rejection.
II. 35 U.S.C. 103 rejections
The PTO also has the burden, via the examiner, to establish a prima facie case of
obviousness. In re Lowry, 32 F.3d 1579, 1584, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994);
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). A proper
analysis under § 103 requires, inter alia, consideration of two factors: (1) whether the prior
art would have suggested to those of ordinary skill in the art that they should make the
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