Appeal No. 1997-3787
Application No. 08/275,241
containing the same. We limit our review to this issue only
and we take no position respecting the patentability of
compounds D-2 through D-44 and photographic processing
compositions containing these compounds.
As indicated by the examiner, Haijima discloses a color
developing agent defined as Formula (D), which includes the
claimed color developing agent, compound D-1. See column 2,
line 50 to column 3, line 2, together with column 18, lines 5-
46. To arrive at claimed compound D-1, we find that some
picking and choosing of the substituents described in Haijima
are necessary. Accordingly, we determine that Haijima does
not provide a disclosure with sufficient specificity to
constitute a description of the claimed compound and
composition within the purview of 35 U.S.C. § 102(a) or (e).
In re Schaumann, 572 F.2d 312, 315, 197 USPQ 5, 8 (CCPA 1978).
Although the above-mentioned picking and choosing has no
place in making a rejection under 35 U.S.C. § 102(a) or (e)
for anticipation, it may be entirely proper in the making of
an obviousness rejection under 35 U.S.C. § 103. Merck & Co.
8
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