Appeal No. 1997-3729 8
Application No. 08/362,107
claimed subject matter.
It is appellants’ contention throughout the Brief that, “[t]he examiner has provided
no teaching that would lead one to select the grain or teach [one] how to form the grain
such as specified in the claims.” See Reply Brief, pages 4 and 5. While we acknowledge
that Takada discloses numerous combinations of photographic emulsions, the fact that a
patent discloses other effective combinations, does not render any particular formulation
less obvious. We find this particularly true because the claimed subject matter is used for
the identical purpose taught by the prior art, i.e., a photographic emulsion having a silver
halide substrate and a silver iodide shell. See Merck & Co. v. Biocraft Labs., Inc., 874
F.2d 804, 807-08, 10 USPQ2d 1843, 1846 (Fed. Cir.), cert. denied, 493, U.S. 975
(1989). Furthermore, in a § 103 inquiry, the teaching of a preferred specific embodiment
is not controlling since the disclosure of the entire prior art including the non-preferred
embodiments must be considered. Id. Accordingly, we conclude that it would have been
obvious to the person having ordinary skill in the art to have utilized the teachings of Takada
to obtain photographic emulsions [and the preparation thereof], within the scope of the
claimed subject matter.
As to claim 6 directed to tetradecahedral grains having {111} and {100} faces,
appellants have explicitly acknowledged the teachings of Takada at column 13, line 26
specifically disclosing the requisite grain of the claimed subject matter. We accordingly
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