Appeal No. 1998-1672
Application No. 08/708,163
the claimed range are disclosed, a case by case
determination must be made as to anticipation. MPEP
§ 2131.08 Rev. 1, Feb 2000. The examiner must, in this
case, provide reasons for anticipation. Ex parte Lee, 31
USPQ2d 1105, 1107 (Bd. Pat. App. & Inter. 1993). Here, the
examiner has not explained how Fujimoto anticipates claim
25 in light of the fact that (1) the example at cols. 43-44
does not disclose an pH within the claimed range; (2) the
amount of bromide or iodide ions at col. 25 is not
specified to fall within the range claimed in claim 25.
Accordingly, we reverse the 35 U.S.C. § 102(b) rejected.
With regard to the 35 U.S.C. § 103 rejection, the
examiner has made a proper prime facie for the reasons
presented by the examiner on pages 4-5 of the Answer.
Appellant argues that the pH of the solution is kept
within a very narrow range of from about 9.0 to 9.7,
preferably from about 9.3 to 9.7. (Brief, page 10).
The examiner rebuts and states that Fujimoto suggests
a pH solution of 9 and above. (Answer, page 6).
Appellant states that the effect of pH on the color
developer solution stability is demonstrated in appellant’s
comparative showings on pages 17-20 of the present
application. (Brief, page 10). Appellant states a very
modest change of pH from 9.7 to 10 caused a significant
loss in stability. (Brief, page 10). Appellant states
that improved solution stability is achieved using the very
narrow pH range recited in appellant’s claims, and that no
one would have expected this minor pH difference to have
such an impact on dye density at elevated temperatures.
(Brief, page 11).
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