Appeal No. 1999-2529
Application 08/915,683
thiosulfates in the sensitization of the core of core/shell grains on that basis (e.g., brief, pages 9-
11, and reply brief, page 2), such a determination is not dispositive with respect to the issue of
prima facie obviousness because each of Tanemura and Shuto specifically teach that the
thiosulfonates disclosed therein should be present when the core of the core/shell tabular grains
of Evans are chemically sensitized with chemical sensitizers, including thiosulfates in order to
obtain certain properties as we pointed out above.
Furthermore, while the silver bromide core of the claimed internal latent image direct
positive photographic silver halide emulsions encompassed by appealed claim 1 is chemically
sensitized with “substantially no thiosulfate ion,” which plainly does not entirely exclude the
presence of such ions as appellants contend (e.g., brief, pages 9-10, and reply brief, page 3) but
would exclude the amount of ions present in the Examples of the applied references, each of
Evans, Tanemura and Shuto would have taught that other core sensitizers than thiosulfates can be
employed with gold in sensitizing the core of the core/shell tabular grains of Evans. Similarly,
the specific teaching in Tanemura and Shuto to have the thiosulfonates thereof present when
sensitizing the core of the core/shell tabular grains of Evans is sufficient direction to one of
ordinary skill in the art to do so even if these references exemplify other core/shell grains (reply
brief, page 4 and n. 1). See generally, Merck v. Biocraft, 874 F.2d at 807, 10 USPQ2d at 1846,
quoting In re Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976) (“But in a section
103 inquiry, ‘the fact that a specific [embodiment] is taught to be preferred is not controlling,
since all disclosures of the prior art, including unpreferred embodiments, must be considered.’”).
Moreover, appellants’ argument that the property of negative sensitivity, that is, the
formation of a negative image or “less susceptible to the formation of re-reversed negative
images” (specification, pages 5-6), of the claimed internal latent image direct positive
photographic silver halide emulsions is not disclosed by the applied references (brief, pages 8-12,
and reply brief, page 4) alone is not persuasive to establish nonobviousness since there is clear
direction in Tanemura and Shuto to have the thiosulfonates thereof present during the chemical
sensitization of the core to obtain the advantages taught therein, including a high-contrast
formula (A), (B) or (C)” as pointed out at hearing. In any event, all that is disclosed and claimed
by appellants is the “presence” of the thiosulfonate compounds when the core is chemically
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