Ex Parte CHEN et al - Page 14




             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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