Appeal No. 1997-0195
Application 08/126,987
compound reduce fog, and a triazine hardener as taught by Kadowaki . . . may be used in
the presence of a palladium compound, with a reasonable expectation of achieving an
element having adequately hardened layers and the element having reduced fog.” Answer,
paragraph bridging pages 4 and 5.
9. A rejection of claimed subject matter under 35 U.S.C. § 103 in view of combined
disclosures of prior art references requires consideration of (1) whether the prior art would
have suggested making the claimed composition to a person having ordinary skill in the
art, and (2) whether the prior art would have revealed that, in so making, a person having
ordinary skill would have a reasonable expectation of success. Both the suggestion and
reasonable expectation of success must be founded in the prior art, not in applicant’s
disclosure. See In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir.
1991). Neither condition is met here.
On this record, we find that the prior art does not provide adequate teaching or
suggestion that would have led a person having ordinary skill to use: (1) a palladium salt
HCN scavenger “in a silver halide emulsion layer and/or in an adjacent layer thereto” as
required in claim 1; or (2) chlorinated s-triazine hardeners in Harbison’s photographic
element. Harbison, considered in its entirety, teaches away from placing the HCN gas
scavenger in a silver halide emulsion layer or in a layer adjacent to the silver halide
emulsion layer. In arguing that Kadowaki cures the deficiencies of Harbison, the examiner
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