Appeal No. 1997-3729 14
Application No. 08/362,107
created double patenting parallels that for a § 103 rejection. While the double patenting
rejection is analogous to a failure to meet the non-obviousness requirement of 35 U.S.C.
§ 103, that section is not itself involved in double patenting rejections because the patent
principally underlying the rejection is not usually prior art. In re Braat, 937 F.2d 589,
592-93, 19 USPQ2d 1289, 1291-92 (Fed. Cir. 1991); In re Longi, 759 F.2d 887,
892-93, 225 USPQ 645, 648 (Fed. Cir. 1985); In re Braithwaite, 379 F.2d 594, 600
n.4, 154 USPQ 29, 34 n.4 (CCPA 1967). When considering whether the claimed
subject matter is an obvious variation of the invention defined in the claims of U.S. Patent
Nos. 5,726,005 and 5,736,310, the disclosure of the patent may not be used as prior
art.
Our analysis of the claims before us is based upon the disclosures of Lok, Shuto and
MacIntyre each reference providing both a disclosure of the combination of compounds
present in the claimed subject matter and the requisite motivation for the addition of those
compounds to a silver halide emulsion. See our findings and conclusions supra. In as much
as the appellants state that, “Serial Numbers 08/649,391 and 08/651,193 do disclose
grains that include those such as claimed in the instant invention,” Reply Brief, page 3, we
conclude that it would have been obvious to add the combination of thiosulfonic and sulfinic
salts as disclosed by each of the secondary references to the emulsion of the claimed subject
matter. The argument presented by the appellants on page 4 of the Reply Brief directed to
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