Appeal No. 1999-2529
Application 08/915,683
We affirm.
Rather than reiterate the respective positions advanced by the examiner and appellants,
we refer to the examiner’s answer and to appellants’ brief and reply brief for a complete
exposition thereof.
Opinion
We have carefully reviewed the record on this appeal and based thereon find ourselves in
agreement with the examiner that the claimed internal latent image direct positive photographic
silver halide emulsion encompassed by appealed claim 1 would have been obvious over the
combined teachings of Evans, Tanemura and Shuto to one of ordinary skill in this art at the time
the claimed invention was made.
There is no dispute that Evans discloses internal latent image direct positive photographic
silver halide emulsions containing core/shell tabular grains. See Evans, e.g., cols. 7-10. Indeed,
appellants acknowledge as much in their specification (page 12, full paragraph, penultimate line).
Both the examiner and appellants also agree that the core/shell tabular grains of Evans differ
from the tabular core/shell grains of the claimed emulsion encompassed by appealed claim 1 in
that the core of the reference grains is not chemically sensitized in the presence of at least one
thiosulfonate compound of the formulae (A) through (C) with a gold sensitizer in combination
under the condition that substantially no thiosulfate ion is present during the chemical
sensitization, as provided by the plain language of the claim. Thus, the dispositive issue with
respect to a prima facie case of obviousness is whether one of ordinary skill in this art would
have found in the combined teachings of Evans, Tanemura and Shuto the reasonable suggestion
that such thiosulfonate compounds disclosed by Tanemura and Shuto can be present when a
silver bromide core of the core/shell tabular grains of Evans are chemically sensitized in the
presence of at least a gold sensitizer, as the silver bromide core is also required by the plain
language of the claim. See In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed.
Cir. 1997).
We first consider appellants’ argument that core of the reference grains is composed of
silver bromoiodide while the grains of the claimed emulsion must be composed of silver bromide
(reply brief, pages 2 and 4). We cannot agree with appellants that Evans is so limited because the
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