Appeal No. 1999-2529
Application 08/915,683
facie, one of ordinary skill in this art routinely following the combined teachings of Evans,
Tanemura and Shuto would have arrived at the claimed internal latent image direct positive
photographic silver halide emulsion encompassed by appealed claim 1. See In re Vaeck,
947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991), citing In re Dow Chemical Co.,
837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988) (“Both the suggestion and the
expectation of success must be founded in the prior art, not in the applicant’s disclosure.”); In re
Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981) (“The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated into the structure of the
primary reference; nor is it that the claimed invention must be expressly suggested in any one or
all of the references. Rather, the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.”).
Accordingly, since a prima facie case of obviousness has been established over the
combined teachings of Evans, Tanemura and Shuto, we have again evaluated all of the evidence
of obviousness and nonobviousness based on the record as a whole, giving due consideration to
the weight of appellants’ arguments and the evidence in the declaration of appellant Matsunaga
filed March 4, 1998 (Paper No. 19).2 See generally, In re Johnson, 747 F.2d 1456, 1460,
223 USPQ 1260, 1263 (Fed. Cir. 1984); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785,
788 (Fed. Cir. 1984) ; In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
We have carefully considered all of appellants’ arguments in the brief and reply brief.
Even though the thiosulfonate compounds of formulae (A) through (C) of appealed claim 1 are
not identified as chemical sensitizers in Tanemura and Shuto, and it is not clear from appellants’
specification if they are sensitizers,3 and thus may not be said to be interchangeable with
2 We have limited consideration of the evidence of record to that argued in appellants’ brief
(page 11) and reply brief (pages 4-5) which involves only the evidence presented in the
declaration filed March 4, 1998 (Paper No. 19). Cf. In re Baxter Travenol Labs., 952 F.2d 388,
392, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991) (“It is not the function of this court to
examine the claims in greater detail than argued by appellant, looking for nonobvious
distinctions over the prior art.”).
3 There is no dispute that the thiosulfates are exemplified by each of the applied references as
sulfur containing sensitizers for the core of core/shell grains. However, there is no disclosure in
either Tanemura or Shuto that thiosulfonates are sensitizers and the disclosure at page 39, lines
14-17, is unclear since the preferred “thiosulfate” is not “[s]uch a thiosulfonate . . . [as in]
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