Appeal No. 2002-0148
Application No. 09/104,675
In support of these conclusions, the appellants have
discussed the comparative examples at page 7 of the Brief and
seem to conclude that as the comparative examples in the
specification use the same DIR compound as Bohan, this proves
that Bohan cannot meet the claim limitation. The conclusory
nature of the explanation renders it capable of being reproduced
in full below:
The Board’s attention is directed to the examples in
the provided specification that precisely show comparative
examples 002 and 102 and inventive samples 001 and 101. The
full working examples include detailed formulations for
comparative and inventive film samples, their imagewise
exposure, photo processing, scanning, digital manipulation,
printing, and the results of both objective measurements and
observer evaluation of the derived images. This material
occupies page 49 to page 99 of the 108-page specification.
Since the rejection appears to be based on the
Examiner’s impermissible hindsight driven by the combination
of the Appellants’ own teachings with the Bohan et al
reference, the rejection is improper and ought to be
reversed.
Further, the rejection appears to have its’ root in the
Examiner’s inability to find both comparative and inventive
examples in the present specification. It is respectfully
pointed out that about half of the specification is devoted
to describing these comparative and inventive samples and
the objective and visual results observed with these
samples. As is clear from a reading of the present
specification, it is Appellants’ comparative examples that
fail to achieve the gamma ratio required by Appellants’
invention. It is precisely these comparative samples that
employ a DIR compound common with Bohan et al. To repeat,
it is Appellants’ comparative samples that might be derived
from the teaching of Bohan et al. (Appeal Brief, page 7,
line 23 – page 8, line 13).
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