grant relief. The other two causes of *1 CCPA concededly Application “under the con- come Edwin H. LAND and action Rogers. Howard G. II But, as stated Parts tract”. III, supra, Appeal there was a we hold that No. 7488. single action on the contract cause of States Court of Customs United whole, judicial claim did not and the Appeals. and Patent purposes until accrue for limitations 23, Nov. 23, 1964, April even as “breach” subject not items to the administrative
process. proper rule is that limita If the by merely is the administra
tions tolled process, plaintiff’s petition still
tive is says timely. that The Government 6, completed on October contract was 16, begun 1958; (on suit was October years 1964) days than six a few more proceedings later. The administrative Energy Commission Atomic
consumed much this time. Subtract period consid of administrative ample room.32
eration would leave decide, however, whether doWe not Worley, Judge, Chief dissented urging plaintiff that correct part. the first cause of action was process under the to the administrative Uphols- (cf. American contract Marine States, tery 345 F.2d Co. v. United (1965)), do decide nor 170 Ct.Cl.
whether, assumption plaintiff view, wrong the defendant
estopped (from arguing plaintiff complete now the administrative
must
process) Govern- conduct representatives at and after Energy Commission’s the Atomic time
hearing examiner announced beyond the administra- claim jurisdiction be con- could not
tive today is that we decide All sidered. court is not
plaintiff’s in this
barred limitations. partial motion The defendant’s
summary judgment denied the case to the trial commissioner returned proceedings.
further (2) did true limitations not start is a action If the first cause payments administrative until if the “breach claim” estopped (3) is somehow the defendant proceedings claims would other claim, way admin- the claim was handled statute as to toll the upon istratively. paca We do not these barred un- would be of action cause first (1) arguments. plaintiff is correct less the completion than October date was later *2 Brown, Cambridge, Donald L. Mass.
(Stanley Mervis, Cambridge, Mass., H. counsel), appellants. Moore, Washington, Clarence W. D. C. (Jack Armore, Washington, C., E. D. counsel), for the Commissioner of Pat- ents. WORLEY, Judge, Before Chief
RICH, MARTIN, SMITH, and AL- MOND, Judges. Judge.
RICH, appeal This is from the decision of the Appeals Patent Office Board of affirm- thirty the examiner’s application 565,135, serial No. February 13, 1956, filed entitled “Photo- graphic Color Processes.” The claims on appeal processes both products define 52-55, 58-61, 63, 64, and are numbered 66-71, 73-76, 78-86, prod- and 90. The uct claims are 69-71 and 82-86. The process others are claims. Proceedings The Below proceedings in the Patent Office Appeal were unusual. taken to the board from the final examiner filed his answer. After hearing, remanded the board case “for of his examiner clarification position.” said, do not board “We have the benefit of Examiner’s views as to the references claim, noting prod- process each varying scope uct claims of and different species presented.” Exam- A second filed, going Answer was into much iner’s greater grounds of detail as to the jection. Appellants then filed two amendments and interview. The had examiner entered “since the amendments materially reduce the issues on peal” and filed third Answer in noted that several claims had been original appeal cancelled since that other claims had been amended so any question as obviate the claims throughout reading appeal directly all on certain relied on ref- The references anticipated, e., fully Office erences so to be i. three Answers met. here are: Solicitor 6, 1944 2,350,380
White June Yutzy *3 2,756,142 July 24,1956
(Piled 22,1953) Jan. Rogers 18, 2,774,668 Dec.
(Piled May 28,1953) (sole) 17, 2,968,554 Jan. Land Aug.
(Piled 9,1954) May Rogers (sole) 2,983,606 9, (Piled July 14,1958) (Parent applications 9, 1954 filed Mar. abandoned) 29,1955, and June now both Rogers leged subject the mat- patentees and to render obvious the Land Rogers appealed patents are of of ter claims in view appellants. two Since Rogers Simmons, distinguish cited, ’668 of In them as ’606. we will 312 F.2d decided and ’606. typical patent- us in is a “double Answer, the last exam- In the third and ing” type. case of that thus: situation iner summarized re- issue which sole make observation here appealed claims main is whether normally ap patenting” that “double over matter obvious recite ground plied rejection a as when the (’554) claims or disclosure Land or the patent support patent used to the double White, Rogers (’606) in view ing rejection is not as refer available a Rogers (’668) Yutzy. “prior art” ence show under 35 U.S.C. interest, and However, Rogers Land As a matter of 102 or 103. ’606 was §§ individually jointly, reference, as- Rogers, prior and used in this case as a art filing signors Corporation, White to Polaroid as of dates to which was Company, entitled, presumably & I. duPont de Nemours relied E. the statute Company, Yutzy being 102(e). Kodak to Eastman but not stated 35 U.S.C. § leading Simmons, prior applicant’s inventors in field and are all own patent prior in- photography to which the could used art not be rejection under relates. statute was vention theory predicated therefore Following An- of the third applicants patenting.” “double Here the swer, its decision. rendered board Rogers (jointly), a are Land and seen quotation will be above the last Rogers (sole) principal ’606 reference obviousness, ex- as the the issue plus other references. The existence concisely alter- aminer stated “legal entities,” these different as the (1) It native, two-pronged issue: awas (Land Office calls them issue; (2) to a was 35 U.S.C. § Rogers entity Rogers ’606 one references, Rogers plus other ’606 being another), ais factual distinction patenting” issue a “double was also bearing availability from Simmons of a type predicated on the claims Rogers Land, ’606, prior as well as (here assignee Pola- a common against joint art references Land and bar) assignee roid, application, disputed point al- art additional considered with brings moment we considered later. For This us fact the. merely point appealed claims, wish to the exam- out that all re- like other capacity jected unpatentable dual iner used in a over both as support both primary reference art under section 103 and for “double rejection patenting.” Though termed, for obviousness over the there so rejection patent- rejection originated for “double the latter ing” involving type wording an obviousness final where the Rogers’ point “unpatentable was, issue claims. We based either over next this out it bears on the because the claims of [or] disclosure dispose newly patents to consider and we wish cited Land getting to the merits of This [’606] appealed Answer, claims. iterated the first commented we have before us Patent Office brief was issue with that statement. the board listed claim 56 as on Appellants’ The docket branch of the Patent thought The reason iner it According on Claim 56 is not making up page is filing Claim Appeals page ** not on said, *4 Questioned 1: 56 * brief so treats “The was appellants’ to the usual and is was allowed appeal the reversed allowed thought decision on the Alloioance Claim record for this printed an “allowed claim.” appeal. question, is that brief prepared after procedure, so of it. That to claim 56.” of is that The reason the board. the the Exam- the Board raised It states it takes Record Office, court, why the the mons. by 56 Zickendraht quite “double gins third emphasis): authority, on in the second In CCPA 450 [312 F.2d view of distinct Yutzy. claims are not seen to be over recite a * * * [******] The instant and ends with these sentences different Answer, the Zickendraht, patenting” Yutzy. from See patentably For this claims of is another of our In dealt where the discussion be- Rogers (’606) type Answer, re claims are not seen * * * with at Simmons, decisions, reason, 50 138 distinct case 225]. CCPA 990] with citation USPQ length the from patentably 136 (’6$6) invention view 22 USPQ recent Sim- (our [50 of Solicitor, the whether Patent Office argument The solictor’s about claim decision of the or did not al- board did is based on his view that all the board devoting low claim 56. After an inordi- rejection did was reverse the section 103 argument nate amount of time at oral and, allegedly pass since it failed to on suggests question, solicitor this patenting,” rejection “double still on 56 “is either of two theories claim not as to claim stands 56. We do not read so theory court.” first was the record. rejections all if claim 56 were firstWe consider what the board itself reversed, fact claim is before us. opinion opens said. Its with state- appeal on The second is that was taken “No has claim been allowed.” It claim, wherefore, this it is not before us. rejection affirmed the of the examiner Clearly, appeal in the absence of an on long on art as to a list of claims patentability claim of its which it omitted claim 56. It then on the merits. We do not before us up separately, took that claim discussed consider, however, that since distinguished how it from the art and insistently questions Office brief so said: pellants’ claim statement allowed, we whether or not applied will consider In our view the art of record the Examiner does not suggest allowed on basis what we process find Accordingly, in the record. of this claim. holding expli- implicit made not be should of claim will [Emphasis [Emphasis cit. ours.] ours.]
sustained. Thereby appel- advised distinction as board was made no We note legal theory record,” understanding lants’ board’s action the “art of on which sug- ruling ’606, petition, on claim 56. failed includes which denied, gest note that the board said “we process. We which was the claim * * * At rejection” decision [sic] sustained. reversed was not “the only 56,” by have opinion said: which it could the board the end its meant that it had reversed the decision necessary to rule do not find Generally, examiner on claim 56. on the claims they added: ground patenting of double spect Rogers, the disclo- rendering since we our decision relied upon, absence sure relied disclosure affidavit, Rule 131 available a reference was available as present applica- art. date tion. all summarised its decision then ending appeal, with the state- rejection on Since we sustained the beginning of ment, quoted above at the dis- broader basis the available discussion, the decision of then, nor do closure we did n examiner“is 56.” reversed as to claim *5 now, compelled a to render deci- feel specific clear, state- This to us a seems aspect upon the sion based narrower But the end. ment. this is not patenting. of double [basis?] request Appellants a for recon- filed Rogers it, deemed As ’606, the board we view ruling asking specific on sideration ref- insofar as it had value as a saying patenting issue, it that double erence, to available as be it expressly out “should thrown since be that no reason utilize therefore saw (cid:127)only they in- the issues” which confuses patent patenting” the- under a “double They bring court. tended to to this ory, is in the sense which “narrower” pointed did out that the examiner reject on the dis- that one cannot thus Rogers '606 contend that closure, do, preferred to as the board adding: invention, (cid:127)claimed same reject claims, al- has must what then, question, dif The is whether ready patented, plus if de- other art been appeal on the claims ferences between viewed, sired. Thus it is reasonable (’606) di the claims of are that the assume board’s view im rected to unobvious variations patent- any including theory, “double actually question provements. This ing,” distinguished claim 56 question presented in the art the same including references, claimed rejection 103.1 under 35 U.S.C. defining ’606, by un- in an matter .Appellants pointed process. out there board remem- obvious It should be sup- used bered in fact reversed the that it had pat- port type of “double obviousness added: (cid:127)of claim 56 and enting” rejection. Appeals has al- Board of Since the concerning applicants, can The solicitor’s theories it lowed claim to appear us on double the board did what be assumed that reversed, groundless. told patenting When the board was was considered only did This allowed claim not respect it had at to claim least with art, here, plus is not an issue analyzing standpoint other 1. From the statutory 103; ap untier section not a obviousness of the inventions concurring issue, pointed pealed out in the is a correct statement. this claims Ziclcendraht, supra. opinion warning Section But we issue word such, pat question involved “double obviousness rejection. patenting” patent enting” rejection, “double based on demur, repeated arguments specific that it re- it not had claims and the there- rejecting to, emerges, versed decision it. a central theme stated at oral argument gist invention, to be the in the issue discussed solicitor’s This permeate speci- which seems to the whole middle, beginning, in the brief at the agreed generally fication and to be ob- the end. is not a mere incidental appellants and Office as the noting After statement servation. sought pat- essence of the invention to be appellants’ Appeal Notice ented. One term for it “deferred dif- appealed board decision from had not merely fusion.” We name it here and “subject de- fused a matter will it later. It is first neces- describe 56,” fined seem have it would general sary to understand nature appropriate been have for the solicitor to photographic process products inquired of the what its intended board which occurs. been, action had he doubts case had Furthermore, about it. in- photographic process we deem it color here appropriate for him to have the is- raised involved is known as diffusion transfer argued sue us and then to before have and we describe init connection awith that we process. (Two-color cannot deal with it because proc- three-color brought appeal may reason used.) us. esses a multi- There is “negative” layer This raised Pat- element, was first call- sometimes brief, long ent Office filed no- “monopack,” consisting after the ed a aof film appeal tice wherein reasons of photosen- base on which there three layers stated. 35 emulsions, U.S.C. 142. deem claim § sitive silver halide 56 to stand allowed. portions sensitized to different light spectrum. visible Associated with The Invention color-providing is a each which substance may itself, “picture-in-a- be either invention relates to a colored material dye, photography popularized such as a minute” or material will Corporation, chemically produce dye. particularly Polaroid react more As- *6 photography. undertaking negative, monopack color sociated with the Before usually it, exposed to describe we it been have considered wheth has after subject image-re- claimed, photographed, er to describe what is an ceiving theory layer that the to which some the three what the claims define is, negative may appears invention to colors the be transfer- describe what red, “imagewise,” development to after be invention from consideration argument negative, by reading blotting-paper of the sort oral and a a specification being imbibition, appellants’ brief, action known un- and it theory through development derstood that at the time of can tell us negative image- they and receiving counsel what transfer and have invented. this, layer doing impossible are in ar face-to-face to close single concept invention, rive relation. at a approaches for different monopack broadly old, lead different negative, to The However, by setting results.2 generally aside constructed On the follows. rejection gap The final and first Examiner’s nevertheless a considerable observe Answer contained a under between the invention described claims, ground subject U.S.C. certain § claims. matter broader appeal, par- rejec- some of which are on failed to What seems to have survived is a ticularly point ground claims, apparent- out and define the inven- such tion tion, ly breadth, and under the same section also because of their define rejection. multiplicity subject contained an undue matter lohich would be obvious repeated This detail the second in- from the rather than the described, having Answer. After an interview and two vention as the board amendments, the nature of which the in- found claim which does define disclose, described, record does not which followed to vention be directed to un- Answer, the second this obvious matter. in the abandoned third Answer. We nega- first, positive image. is, support it is that the there a Thus film or base substantially positive, layer produces tive simultaneously a silver halide emul- of red-sensitive image dye. cyan development. with its a sion associated with Next, green-sensitive emulsion there is a negative Development and trans- image dye. magenta awith associated forming color-forming image fer of the layers top of is a blue-sensitive On these pre- produced, materials are viously as in the image yellow a associated emulsion mono- known Land-Polaroid dye. dye layers Separate may underlie single proc- technique, liquid chrome essing may layers dye photosensitive or the composition which contained in picture photosensi- placed be therein. The three pod unit associated with each simultaneously layers exposed tive are adapted ruptured, of the film and, through upon devel- camera lens being liquid spread op- across the negative opment, images produced, are posed negative image- faces of the images respectively recording, these receiving layers they squeezed when blue, green, por- separately, red usually forming part of between rollers light emanating tions of from or re- allowing proper the camera. After photographed. flected scene image-receiving processing, time for layer proc- type The characteristic of negative. stripped The from the ess that where the silver halide has adapted liquid is to activate light exposed been it is sensi- which may complex the rather chemicals which nega- produce develop tive it can dry monopack, be carried in a state image. doing tive so it chemi- acts image-receiving possibly also dye cally to immobilize the or color- layer, to function as' which commence former associated with it the extent they go liquid. into solution in said Conversely, exposed. has been preferred color-providing A material light exposed where it has not been dye-developer is known as a is both which color-providing mo- leaves the substance dye, supplying the desired color for the image- bile free diffuse positive image, developer and a for the receiving layer transfers, to which light-sensitive silver halide element with hence the name “diffusion transfer.” dye- which it is associated. use imbibed said three colors thus developers appears to invention “image- layer in different amounts or and is and claimed described and, superposed, produce wise” his ’606 is a reference.3 making positive photograph by color regis- color-separation printings three says appellants’ While brief “have *7 is, of tration course, the same This sheet. highly invented a novel and successful description intended crude images forming process for full color give general happens idea of what expressly diffusion transfer” it is not actually monopack com- the more the stated that success is to attributed be layers may plex. such as It contain other wholly present to what the is disclosed light filtering layers, layers, etc. barrier application. oral hear- It was stated at employed process is a “subtrac- does not invention the process, tive” the blue-sensitive color proc- any element, material, or use new blue) (minus yellow layer producing the essing in the com- solution but resides layer dye, green-sensitive producing the produce of old elements to bination such magenta green), red- (minus the pas- quote result. will now the new cyan (minus layer producing sensitive red) which, sages specification more combined, from which the the form when appeal application in In 5) here on (col. de- the states That 928, Rogers, Blout and from veloping insulated can be function Rogers patent (1964). joint Blout and molecule, dye in the disclosed the 3,255,001. Rogers, No. June issued serial Blout and of That 485,840, Feb. filed No. gist invention, substantially fully image-receiving layer explain de- ours) diffusibility (all emphasis development : ferred to the time and dif- positive ance with this invention control of inner ability other substances associated gral multilayer photosensitive element control pate fusibility” as “deferred providing Such control sary halide. pable lized larly essential stratum integral multilayer photosensitive ele- providing substances, different desired may several deferred providing color color-providing substances desired As noted [******] to the two to insure that be utilized image general, color-providing photosensitive photosensitive may types layers. deferred images * * * deferred other associated. image-receiving layer. mechanisms substances diffusibility substances diffusion of developing exposed silver utilize the same or several in a development or “retarded mobility”, hereinabove, multicolor where processing. than that diffusibility are may photosensitive layer availability to create diffusibility Various the nonimmobilized diffusibility they formed in layers layer may with at substance is may and a This the nonimmobi- color-providing stated that “deferred do not be described creating mechanisms by suitable be obtained of an mobility.” particular is neces- or layers least particu- partici- one, accord- desired which avail- color- latent color- color- inte- This dif- ca- just awith whole cal image-receiving layer according Polaroid and the the desired in them. sults portions primarily Once be the broadest appellants’ appeal, lish claim into its those be confused with and have though to note that of deferred ed our tion, thing new in it. photosensitive tain processing techniques. structed fusion We here transfer the STEPS of: make-up image-receiving layer and once between may 52. A patentability. depends they steps. object instances, single opinion the italicized it is not contended there is ingredients occurs in another method, be capitalized are so brief which as to result, reproduce images helpful process diffusion, is to entirely processing thus far will three element an made get imagewise reader who utilize relied to note that since the We have broken the in color portions italicized integral multilayer main on the construction process claim monopack process makes process says they good as to forming positive solution, may both upon layer. monopack key process color immobiliza- no mention comprising is inherent has accomplish the chemi- be should not which re- interested claims on words of types passages, to estab- stated to solution. so con- are the In spread follow- image steps any- cer- images latent color record sev- integral, multilayer, EXPOSING substantially layers eral emulsion photosensitive monopack com- element *8 simultaneously developed prior prising support carrying plurality a a color-provid- time the nonimmobilized continuous, coextensive, superposed ing unexposed areas substances photosensitive silver emulsion halide diffusibility. requisite achieve layers, having each said emulsion as- processing, type In second color-providing sociated with it a sub- integral multilayer photosensitive ele- stance selected from the class consist- processed layerwise, ment emul- image dye of an layer being and an developed intermedi- sion color-providing image dye, ate said associated each said silver substances by being halide not immobilized emulsion sensitized to therewith, development, portions spectrum, different rendered diffusible 874 emulsions, are “Prior Art”— What each said DEVELOPING References developed Part I areas, aas
immobilizing in development, said said function aspect question of the This first color-providing substance associated recently the issue before involves thereby pro- each said emulsion Supreme in Hazel Court United States viding undeveloped each areas of Brenner, Research, U.S. Inc. 382 tine v. image-wise distribu- emulsion said an (1965). 252, 335, L.Ed.2d 304 15 86 S.Ct. nonimmobilized, tion diffusible Yutzy pat Land, ’606, and substances, color-providing applica copending with the ents were all imbibition TRANSFERRING ground statutory appeal. tion on image- portion a of each said least question is 35 in this involved nonimmobilized, distributions of wise Though ap 103 U.S.C. pellants obviousness. § color-providing substance diffusible such references concede image-receiving single, superposed 102, they “prior raised art” under section impart plurality of layer thereto whether, question of the old in view images thereby providing posi- dye unavailability pending of the contents develop- image, tive, multicolor said 122, applications § U.S.C. under 35 ment and said effected transfer issuing patents thereon available liquid application single under sec art show obviousness composition. filing tion dates of their 102(e). U.S.C. United States. See 35 § process Allowed claim 56 and other open Appellants held this depend il- from claim 52. It is brief, May 1965, because their filed luminating to allowed claim: read the pending Hazeltine was then before process A defined in claim 8, 1965, Supreme Court. December permeation adversely appellants. point of said wherein said was decided integral available multilayer, Patents may as references photosensitive otherwise ele- singly used or combined as proceeds layerwise, substantially support their dates to section U. S. development emul- so that of an outer though rejections copending with the layer completed substantially sion re in In at bar. We so held color-providing and diffusion of the Harry, 920, 51 333 F.2d CCPA undeveloped associated with substance (1964). case, respect With to this partially completed areas is at least Yutzy clearly refer makes as a available permeation substantial ence, question being as to no other raised development emul- next inner availability. its layer by liquid composition. sion said Rogers ’606 As to the Land and allowing it, pointed out the board references, however, appellants raise diffusibility it is limited to control of part question about avail second layerwise permeation, which, board ability, our based on decision ** said, not does “the of record Rogers, Blout suggest they (1964). They did admit that board, argue point correctly points appellants’ law As brief out, adjudication require as Blout and nor could have done so the issues appeal- Rogers more than was not decided until the obviousness of each of the 30 be- months after the board decision. claims in art but four ed view objects con to our fore can do have to deal with The solicitor’s brief we this we ground raising sidering questions Point 2 of it on the usual that brief points generally under- do not consider whether some of the references *9 Herthel, lying rejection are, below, citing F. law, 174 In re available raised Panagrossi 1095; argued, 935, question, In re art. 2d 36 CCPA This 904, al., 181, parts. 277 F.2d CCPA falls into two et 47 Soli, 941, What Art” —Part 1288. We are “Prior CCPA References nothing Applicants’ or in II Pat- find those cases the two Joint Sole Own pre- other cited in Herthel which ents cases dealing point cludes of us from with this recently pointed As we out point of law. In none cases it a those Hilmer, 879, In re 359 F.2d of law we declined to consider but things interpretation rather such as the thinking Much could be confused signifi- {Herthel), aof word the factual by realizing rejections avoided limitation, question cance of a claim a of statutory provisions, on not based operability, the construction a claim references, on references and that the {Panagrossi), propriety and the of ac- merely supply the evidence lack response tions of the examiner to which right novelty, obviousness, or loss ground could been have made in Patent Of- may rejec- whatever be the {Soli). Generally speaking, fice de-we tion. questions cline to consider which could ground rejection Rogers Land have should been raised in the Patent support ’606 are cited to is section 103 Office so that have we the benefit of the patents obviousness. did is These personnel views its trained on mat- years sue until several after instant special competence ters within their application They being was filed.4 oppor- so that the Patent Office has the used as references dates U. S. tunity position expert to furnish its joint appellants’ which antedate the fil questions, interpretation on technical only using date. The so a basis for references, applications, and the like. patent U. 102(e): S. section question We will nevertheless consider law, availability such as person ref- A shall be entitled to a patent erence, necessary unless— which is to the deter- patentability. mination of In re Schoen- (e) the invention described in waldt, 343 F.2d CCPA 1258. patent granted application on Indeed, position in a believe we are patent by another United filed interpret opinion our own Blout States the invention thereof applicant Rogers patent *. without benefit [Emphasis ours.] views of tribunals. The Office just argue solicitor is as free to his clearly “Another” means another than they views as he is when have been con- applicant rejec- “the final [s].” proceed sidered below. We therefore to tion, examiner have as- availability Rog- consideration of the raised. sumed of the Land ly patents merely These two first references were cited cited as references. He rejection justified in this final the basis were to ,of patent June had The Land inventive He entities.” then “different proceeded greater length expound issued about five months and the rejection about there- month his the claims of either rejected referring ’606, to. All claims were three Land or to the grounds, initially granting assignee patents the first two of the “unpatentable stated as either over case and to “an extension patent monopoly.” Though disclosure newly the claims of one of the he patents patenting, cited to Land and never referred double * * * ground alone must been in mind have what he had together ground rejection. taken further with one of as the ground, The third Martinez, patents, Rogers longer asserted, the White no was fail- (668) Tutzy.” comply failing said The examiner he ure to with section nothing patentable point “found over the dis- out the invention. On the avail- patents ability issue, closure of these two to different we are concerned rejection, inventive entities.” He cited statute the section 103 with double patenting. as the for this basis as war- ranting issued, newly use of new- *10 876 alleged (a) patents prior on is not the art the whereas here ers ’606 ground Rogers, individually, subject matter relied on is not claimed and Land (b) point respect same in of fact claimed. were “another” with legal significance joint al persons applicants. in The first these We see leged respect granted. to sec distinctions with it for The second Answer took merely rejection. Claiming ref tion in the remand 103 Answer on the first filing patent pointed specific dates erence has on a double out the relevance ing
antedating present applica ever that but it has been settled issue v. tion. The third Answer on the second since Alexander Milburn Co. Davis- again 390, Co., 46 Bournonville 270 to consider amendments U.S. S.Ct. remand availability 324, (1926), L.Ed. 70 651 wherein seems to have assumed 102(e) originated, clearly prior rule of section that did like art and the board Additionally, explaining why in disclosure reference is available wise. in prior unnecessary or not the disclosed found it the double art whether to rule on patenting rejection, re In which the examiner matter is claimed. See throughout, supra, Hilmer, pages 862 and had retained board made at 359 F.2d portion only express That effort the Patent statement that distinguish Rogers we ’606 on availa Office makes Blout and it “is relied 5 prior ble as art.” This have think it must could fail. filing been on the basis of and based date rule, Blout As to the soundness of the 102(e). on section cases show cite a number of elementary ing copend Subsequent it is that to the board decision here- in, application inventor we handed our Blout the same down decision art,” namely, Rogers entity wherein, “prior re on the facts there us, 1001, presented unanimously Heinle, 1164 we 342 52 CCPA held F.2d Rogers patent (1965), “not v. Drillmaster sole ’606 was Weatherhead Co. 1955), against properly Supply Co., (7th Blout 98 F.2d Cir. 227 reference” Rogers joint application v. Colum Old & Co. filed Feb- Town Ribbon Carbon (2d ruary 1955, Mfg. Co., 3, F.2d 379 which after bia R. & C. 159 the March 9, filing 1947),6 Lemieux, 1954, parte 1957 accorded Cir. and Ex date there Rogers USPQ 47, case In the last ’606 for on 115 the disclosure relied C.D. prior Appeals, years but more than six the is- Board in a well-reasoned Davis, Rogers opinion, parte suance of also com- cited Ex Powell ’606. We USPQ (Bd.App.1938) Rogers, mented that where one of the same joint specifi applicants’ applicants, own British held was not “another” with- was meaning though 102(e), cation, published a few weeks before of section filing prior opinion expressly application, of their does not refer legis subsequent key except by quoting the statute art concluded that rule, discussing had not altered that word from it course of lation dispute case, must art in that revolved reference asserted show of someone other than “Rule the work around disclose affidavits.” applicant. cases For two additional distinguish solicitor seeks Blout rule, recognized that wherein court ground in that 246, Land, 109 F.2d see In re portion case relied ’606 251, 863, Land, held was not claimed and that (1940), court said CCPA 869 where the unclaimed matter was not pellants’ filing specifi- two date. The last 5. This was because originated parent dates used. had cation various applications filing dates. with different point ease is not 6. We believe this ap- The final was filed after reference the Roster this issue because patent, pellants filed, July 1958, 14, as a con- copending, involved no which was tinuation-in-part patentees of others March filed with the common inventor suit, Menihan. and June Lewis and
377 prior copending patent Land’s own filed patentable ford’s invention not was be- * * * claimed, only by could for what used it cause “known others in this rejection e., support country, i. in of a for double (emphasis his invention” before patenting. ours), part under R.S. 4886 which 102(a). is now The “other” in the Mil- dispute There be no Clifford, stranger bum case was a total A, not “another” as to the law that A is to Whitford. B, B is not as to or even that “another” B B. A & are not as to A & “another” The salient fact in Milburn was that involves, case, But that is this there was conclusive evidence that his Blout, question either as did whether invention was known others he before joint A A B or B “another” as to & as claimed to have it made was there 102(e). inventors under section countervailing evidence at all. What Reynolds, F.2d In Middleton and 319 he novelty, put had invented lacked it (1963) way, is also dis- inventor, 50 CCPA 1479 or he was not first by solicitor, put cussed and the it another. The sole evidence was attempting the latter to use it to take patent application. Clifford’s If that ground plication this issue from us on Middle- said, had de- in course of prior scribing ton was to the board deci- decided another invention on which Clif- herein, got sion patent, and therefore ford his it was describ- How- could have below. Whitford, been considered in addition an invention of ever, parallel Blout. is not a case to which would more resemble the case we rejection there, of a The Middleton Blout, had would have been evi- Reynolds application, based on sec- anyone else, was Clifford, dence that knew 102(b), patent tion the Middleton sole the invention made he Whitford before one-year by being contrary, cited as a time-bar made it. On it would show year reason of before the its issuance Whitford made his invention before Clif- joint filing applicants’ date. We held repeat ford described it. We what we pointed Hilmer, was not reference for that statutory available as out in purpose applicants en- were finding unpatentability because basis for the titled date the date novelty, pres- Milbum was lack of patent. opinion quotes ently our 102(a). While embodied in What section general from Lemieux and makes some by Whitford claimed was known others (Clifford, statements least) about the invention at the date of his own, applicants’ reference invention. dictum and it is clear that neither rejection today In a under 102(e) issue in- here nor section was Act, 102(e) so-called “section volved. rejection” predicated equally on lack Dealing, are, novelty with a section 103 102(a) as we if the reference rejection support fully invention; and with references describes the if it is alleged partially of that to show described, because of a differ- appellants by ence, art to virtue of section 102 then it is on section into based (e), it behooves consider the funda- us to which must be read out- rejection. statutory supplies mental basis lined 102 which the evidence history In Hilmer we reviewed of obviousness. first case evi- meaning (359 102(e) section dence shows was old and the invention 875) origin at in the Milbum case obvious, and its in the second it was patent wherein invali- applicant patentee Whitford’s time the at bar ground pat- dated on Clifford’s made his invention. ent, containing description however; of it 102(a) a full based on any (e) merely earlier than claimed date invention evidence in the makes the by Whitford, patent” available, evidence that Whitford form of a “reference statutory was not the inventor. The first as before 1953 the rule the Milbum basis of that decision was that Whit- case made it available. significant 102(a) language, Rule words its and of broader amply or used others be- will demonstrate. “known Rule If appli- complied with, “shall not
fore invention thereof the reference nothing grant 102(e) patent” parallel bar cant” and the words of a restricting applicant “application another is said to com- *12 ** by pliance specific thereof as the the invention with its terms only ours). way applicant” (emphasis These a reference the demonstrate that knowledge key by of on which resolution “others” are the words does not disclose present problem applicant’s real is- the turns. The an but dis- invention instead, knowledge evidence, closes, by includ- the others of sue is whether all references, truly applicant’s acquired knowl- the shows own invention after edge ap- —necessarily by time a the after —he made it. Such another pellants wholly compatible or state made their invention whether of facts with is contrary. novelty question of the It a the and of shows is unobviousness plicant’s fact. invention under sections and 103, notwithstanding a its disclosure thinking kind, problems On this of having filing patent date “reference” a following to have fallen into the seems applicant’s. the There no earlier than is “prior stereotype: patent A is a U. S. necessary order of relation between the 102(e) of as its fil reference” under making fil- and the order of inventions ing date; a “reference” can be overcome ing applications on them. only “swearing by of under Rule back” showing 131; requires approach question a Rule therefore the prac Rogers availability a facts establish reduction of the Land and reference, realistically is, or patents tice before date of a ’606 for what coupled prior conception problem question a reduc with and a evidence diligence; patent by practice a tion to fact disclosure is relied on as to what applicant applicants support or is rec same and invented who ognized incapable being a such ref as We are matter disclosed. any knowl it does not show because not affidavits under erence concerned with edge applicant or by a “others” but all sole Rule 131 there affidavits at as are patentee joint applicants patentees case, Rogers. As in this unlike Blout and “legal dealing separate case, however, are entities” different with in that we are together closely rela and either is as “another” treated who inventors worked Rogers (until Polaroid, assignee, Blout tive to the other their common Therefore, it). question rejected pat- joint application about raised a with a joint applicants and B must “over A inventor who ents issued to an individual patent appli- B joint come” A or to a reference The inventors. one of only way a can overcome one patents all cation and reference by complying all of with “reference” out flowed from research the same requirements of Rule 131.7 by laboratory, prepared same were lengthy, attorneys, complex, in- same way only however, one Rule reading terrelated, overcoming reference, cross- as and contain extensive close by tut “another” made the board was not statement Rogers, applicants against ’606, Rogers “in Blout on this score was affidavit, (See, was cited. Rule 131 whom reference the absence infra.) addition, rehearing, however, In footnote art.” On available Rogers patent dogma. Blout repeated contained reference case, supra, under Rule 79 Affidavits” clear cross-reference “Rule 131 by appellants’ ignored a state- were filed they in- com- of what claimed their in full because not deemed Office Rogers’. vention, distinguished pliance them rule. We deemed with the they though sufficient, however, lines did col. 54-61 even patent 2,983,606, rule, comply No. the same to show with the used herein. reference which is invention disclosed references,8 bearing no re situation closes invention A & B in the describing to the Milburn case whence semblance course of his sole invention making patents copending came law and when he so describes the invention of references, disclosing in section “prior available as codified A & B is not he art” 102(e). invention, B the A & he has even if legal status “another.” merely wheth here is B, individually, short, “an er A or is not there ex are two conditions theory jointly pressed A B 102(e): ap other” to & on a in section (1) the legal plication “different entities.”9 Of course for the reference must sense different legally “entities” in have been “an who is jointly BA & that an invention (2) made other” date must be * * * B cannot be the sole A or invention “before the invention *13 legal versa, conse applicant 102(e) and vice and certain When the fact, quences as who patentee got flow from such such knowledge of the reference apply patent. it is for But ines applicant’s must him, invention as from fact, too, applies capable for A that when being here, him, or, associated with jointly patent in his B still has he knowledge joint applicants’ had in all the information he had as head by being them, invention one of and being A, true inventor dividual the same necessarily it, describes he thereafter apply they If of B. as individuals application applicant’s files the after during patents on individual inventions patent and invention date “refer as a together working period they when are ence” not that inven does evidence joint inventions, they also have on their tion, made, already when known knowledge of in their several heads full others.10 Evidence of such a state jointly. they have When what done facts, form, whatever its cons must be joint related, as and sole inventions are commonly they here, idered.11 dis- inventor A are Rogers patent pages application occujiies disclosure 8. 45 bar joint description Rogers 2,968,554 printed and the Blout con- record. Land invention, Rogers not the invention another. contains 36 ’606 tains columns. copend- Rogers In that sense “an- was not columns. One table of other 34 other,” patentee, course, ing applications but as a he to which the latter was. However the dis- disclosure relied cross-reference is for relevant made invention, applications. his third was not or that of a Addi- closures contains 33 applicants’ party Milburn, tionally inas but the there are cross-references to sev- them, which, against applications. own invention other eral possibly prior could not be art. v. Sales Helene Curtis Industries not The situation here dealt with was (2d Affiliates, Inc., Cir. 233 E.2d 148 Bowers, in In us re 359 F.2d 1956), problem faced with the whether regarded 53 CCPA should be McDonough pat- was “another” special exception as a to statements McDonough, Evans and the court entees regarding availability therein of refer recognized of first as one 102(e). ences under impression 102(e) and, under “in view of policy involved”, considerations Stempel, 11. In 241 re F.2d 44 CCPA interpreta- fused commit itself to the 820, was another case in which affidavits joint patentees below tion made that satisfactorily “under Rule 131” showed patentee. were “another” as to the sole that what reference disclosed was reconsidering opinion knowledge in Blout Stempel, On our fact the invention of Rogers, that al., pat wherein it was remarked of which Amos et the reference “Rogers entees, acquired is not ‘another’ to Blout had him so Rogers,” they we now think that remark to disclosing knowledge not were prior Stempel’s been basis have unfortunate. The true others accepted invention. We Rogers of our decision “that disposing the affidavits properly against though not a reference Blout precise reference even terms Rogers” was that the evidence before Rule were not met. now weAs anticipatory alleged matter, proper us showed see the appellants show mitted are here What does the here facts evidence knowledge rejected upon Appellants’ their own evidence? what is the disclosures, just as if the ear- is: as much contention applications had been lier filed sole copend- Even if it assumed joint applications. ing patent available as a reference filing point, under As we this last 35 U.S.C. 103 as its understand assumption date, justifiable ’554 that the Land based it is believed joint patents Land avail- were another are not reference if and against any application, two able appealed instead as references claims, applications, would individual the rule ap copending appellants. apply applicant’s art as to that an plications publications acknowledged by nei- all that him, Heinle, art to ther Land ’554or ’606disclosed Lemieux, 1164; parte Ex here claimed invention USPQ 148, and the reference would pellants’ date. unavailable as not that of “another.” take fact im- this last stated to be As to evidence to the determina- show plicit in un- for obviousness facts, say: tive Appellants der continue the section 103. argument: affidavits have been While no formal *14 filed in this joint Here with a we are concerned and formal oaths cross-references Rogers application of and Land applications joint each clearly the sole and jected upon application an earlier sole in- to who set forth the facts as application of Land and an earlier sole vented what. Rogers. fact that Land com- The subject patents the are municated the matter of the reference oaths of Rogers prior applica- patent Land to the of the ’554 to not of record the and oath orig- filing Rogers’ application es- for tion at in usual form an sole bar is by express application. They helpful. not tablished cross-references inal are application the to find Land’s cross-references application application set here amended the [three cross-references as to Rog- Rogers Thus, patent. forth] the ’606 reference and to the the Land Rogers jointly possessed, Land and ’668 ’606 In Land ers references. prior filing joint application. of their find reference to to this description Rogers general plication, in their all the disclosure In ’606 is subject
respective mat- applications sole and cross-reference application upon joint hut relied Patent Office. ter the instant Rogers brought any part appear Land edge knowl- of the this this does to be they support them made relied on the ob- with when disclosure to ** jointly rejection. respect this here. invention claimed viousness In this circumstances, Rogers. sub- Under these it is case is different Blout inquiry compliance copending pat- application Rule with was not of another Simmons, Compare supra, as what evidence re 131 but showed ent. subject who dis- would have to matter the situation invented consider what un- Amos et al. which was relied on had been framed closed been rejection. support on to section instead based der premise patenting,” on “double open question to an to still an invention was stated Simmons’ “prior apparatus improvement on which he under 103 whether on § 35 U.S.C. application year broad filed than a art” therein referred to had more enough applicant’s admissions would then be the to include earlier. The art, example, improvements, he which is about where obviousness of question presented shows or admits that an invention he de- the same double rejection. upon improvement patenting Lo- also to is an See sires inventions, Presti, 52 CCPA 75. one of his own foregoing green-, While, in as would and blue-sensitive be- emulsions dicate, exposed on is much to be both said there surface. At minute opin negative question, possi- our considered discrete sides of the areas it is Rogers ’606, point superposed layers ion is that Land ble regarded case, emulsions, as facts should be three as the examiner did certainly finding complete anticipation art. It is in accord before regard weight authority13 it, claims were amended to avoid but such Rogers individually sepa layered Land and areas are of minute dimensions legal Rogers considering Land and produced rate entities from screen is they joint inventors, by applying strips be re would emulsion so narrow garded per if Land relative to each other have 250 thereof linear lines rejected portions on a participate were inch. The surface copending patent. picture production underlying por- It seems us ap disclosures in individual tions their do not. plications inventions of their individual negative also a screen part they art and seem single transfer, diffusion saying Land and admit as much in liquid structure but contains other rele- brought knowledge of their their Rogers’ vant disclosures. contribution work, individual other’s each dye developers. specifi- the use of work, they with them made the “when frequent cation contains cross-references jointly There invention claimed here.” portions to Land. The relied have portions is no indication that the single-liquid processing, do with anything refei’ences relied on disclose imagewise mechanism of color immobili- any they jointly. did Neither is there zation, prevention participa- and the showing jointly did what image tion in color of under- formation done of the reference lying emulsions and associated color sub- patent applications. which, negative, stances in a screen According considered undesirable. *15 Merits the Obviousness of invention, contrary, Rejection process of the essence of un- that all derlying Against layers image participate background descrip- in do forming. given invention, earlier, of tion we very briefly of will nature indicate the Yutzy obtaining process discloses a reference relied on. disclosures image by a multicolor the transfer of one-step photog- color-yielding Land discloses a color from a multi- substances raphy using layer negative process a monopack single diffusion transfer or to a negative image-receiving layer. with emulsions employs sensitive He color-formers, colors, imagewise three associated immobilization color sub- insulating image- layers, single stance, and processes, a as do all these but receiving single layer, processing Land, Rogers, and differs appel- from rupturable pod. process single solution using delivered from a lants’ in not solution negative processing. Yutzy The solicitor describes the as uSes least three at misleading “monopack” may this as solutions use monopaek many keep- process not such described His six. involves above, by appellants. utilized Land’s all color substances until immobilized negative development is a “screen” the three completed wherein and then re- way layers leasing principle are laid on the base in such a them for transfer. The grid dots, red-, form a Yutzy as to each of the release mechanism of is to Ward, 428, Beck, See 236 F.2d ticular In re this court’s 155 F. 1007, parte Youngs, (1946), and Ex 2d Lindeman CCPA in 33 1060 which although (Bd.Appls.1955) ap USPQ there was no common in inventor plication patent. latter the cases cited do and reference pear support proposition, par- Yutzy. As are diffusi- in agree. to claim utilize color substances which view dependent presence contain ble in of alkali thereaft- claims negative developed which the board er to contact the further limitations weight garded gave image-receiving alkaline sheet. as functional depends negative from claim 71 alkali diffuses into them. Since begin limitation in 70 color substances have common diffuse. significant. is, think, reads: It which we cited for disclosure of emul- White is * * *- regions layers color-providing sub- sion sensitized to different said spectrum at of the visible and associated stances associated with least layers layers photosensitive color-providing It substance. inner emulsion adapted process. is not a transfer to be rendered are diffusible only liquid composition in said after dye cited for ’668 is transfer development of the least substantial complete dyes processes pro- are photosensitive next outermost layers particles separate vided layer [Emphasis ours.] has occurred. slowly permeable material. It portions merely to have been relied on cumula- are true that the italicized regard that as tive. do not “functional” but we weight” good ground give “no them dispose product first will We paragraph view the third of 35 U.S. argument appellants’ claims. At give weight and with C. 112. We them § be of counsel conceded 82-86 to claims we think 70 and this limitation validity the case retained in doubtful limited to deferred diffusion built Supreme pending the decision of the thereby being recited, into structure Research, Bren- v. Court in Hazeltine Inc. limited invention disclosed actual Yutzy They rejected were taken ner. reasons and hence allowable for the same given They or Land both. allowing with White the board negative monopack ele- directed said: “In our view the art which it agree products per We that the se. applied does record as Examiner would be obvious view suggest defined process claim.” against The sec- them. reasoning cited applies to think the same We references product group of 69 claims consists ond product. dependent claims two as a main claim and process turn now to the claims. broadly Claim 69 is directed independent claims. There are two complete photographic Mono- unit: 52, above, 53- which claims Claim connecting image-receiving layer, pack, *16 64, 66-68, 58-61, 63, depend; 55, and single means, processing liquid in its 74-76, 73, and claim from which claims language say pod. Appellants is anal- its depend. ogous 52, quoted indicated above. 78-81 As we to claim that language. Appellants’ Hence, 2, it broad is obviousness re- footnote above mono- definition of brief concedesthe jection rest, appears on obvious- very pack read- elements “comes close but as disclosed ness of the invention Yutzy multilayer negative ing processes obviousness of ignores per se if as a structure may claims. breadth defined in the We * * * recita- functional statements agree- broadly as an our conclusion state ** use manner of tions of the those as to with the Patent Office general combina- said The examiner say nothing about whatever claims which Rogers ’606 but tion is shown invention, regard de- we as what pointed with it is shown board out so name it ferred diffusion whatever holding negative, be screen-type it would disagreement may called, to the as be however, provide obvious, the same reasonably clear Yutzy’s monopack and claims which contain with combination reading depend- thereto, Rogers ’606 limitations on Land held obvious including claims, must, merely spread- all as Claim 58 adds 52 the ent we processing liquid according claims from which limitations Rogers technique they depend. the Land will now sort out 'We and claim negative separating image 59 the claims. layers processing. speci- after Claim 60 reproduced with the above Claim 52 dye-developer Rogers fies from ’606. We portions rely patent- rejection affirm the 58-60. ability It will seen that italicized. developing, specifies steps exposing, including color-pro- Claim 64 recites the transferring; broadly defined viding that a processing liquid substance in the monopack Yutzy ex- describes is such as to be associated with the outermost silver posed developed and that there Appellants halide emulsion. describe imagewise color immobilization “unique this as a embodiment” their art; that color is trans- known rejection invention. this claim layer; image-receiving ferred gone along to have with single processing liquid is used. 52. incorporation We find the of color agree all. that the And that is about We processing liquid substance in the to be together Yutzy putting mon- mere Rogers Rogers disclosed in ’606 and ’668. single opack with the Land and says nothing The claim about deferred processing methods, more, liquid without rejection. diffusion. We affirm its properly af- described as obvious. We rejection firm the of claim 52. As to claim 66 the examiner noted product it is “not met Claim 58 is almost the same alone.” [’606] quoted claim 70 from and discussed alluding solicitor lists it with claims above. We think should allowed for deferred diffusion. Deferment given do reasons as to We pears accomplished by using to be a color- agree view that the board’s providing initially substance insoluble in merely claim 53 hints at deferred diffusi- single processing liquid specified in bility or so broad to read parent claim 52 but rendered soluble dur- Yutzy. rejection. its reverse ing processing. Seeing no rea- distinct son for its it. reverse depends
Claim 54 from claim 55 claims 61 and from Claims 67 and 68 are drawn to limita- color-pro- Claim 54 calls at least one tions which are to be found in viding having a substance rate of solu- ’606, relating developing agents. tion in the solution slower specifies dye Claim 90 inter- development than rate as- of its mediate of claim coupler. 52 is a color layer. Appellants’ sociated silver halide Such is shown in Land. We sustain the technique brief this as a in- describes “to of claims and 90. This color-providing crease control of each completes depending the claims from 52. substance its own emul- silver halide sion, improve and thus color isolation Independent claim 73 resembles claim Claim 55 adds that con- 52 but specifying more limited *17 by permeated trol a a is carrier at slower Rogers’ dye-developers monopaek, in the light-sensitive is rate than the emulsion an solution, alkaline and the permeated, partióles carrier calls for color sensitivities the emulsions. We layer layer for the emulsion and 63 thing unpatentable it for the same rea- layer. behind the It seems to emulsion dependent sons as claim 52. The claims techniques, find in the us these which we from it add various other limitations prior art, imagewise im- to do have with from the any art and none refers in mobilization, diffusion not with deferred way to agree deferred diffusion. with the Their re- as we understand it. We jection 54, 55, 61 of claims is sustained. observes, majority Patenting Rejection the dis- As the Double capable expression closed invention is sepa- unnecessary pass find it ways. “Deferred diffusion” various appears rately on this expression use. What one is case in in the have been retained recog- majority apparently fails to patents ’606 event Land and however, nize, are several is there prior art. found to be unavailable were diffusion” disclosed kinds of “deferred earlier, the board As and as stated by appellants, exemplified the fol- matter, simply a narrower is viewed lowing pertinent disclosure: aspect utiliz- of the obviousness object this invention Another as a base the claims provide diffusion transfer-reversal plus instead other processes wherein As to full disclosure. diffusion of color-providing substances associated affirmed claims which we have layer clearly rejection, least emulsion an un- with at one obviousness integral multilayer photosensitive rejection. necessary ele- pass on another which, layer image-receiving to an re- As to the claims on have way rejection, in such a be de- for- controlled versed obviousness rejection, until substantial de- patenting least tiori this double ferred velopment predicated obviousness, latent color record be would layer contained said emulsion has for versed same reasons. occurred.
Conclusion [*] [*] [*] [*] [*] may general, In be stated foregoing reasons, the For the diffusibility desired deferred of color- the board is reversed as decision of 53, 66, 70, providing may affirmed and 71 and claims substances obtained 63, 64, 52, 54, 58-61, 67- to claims types one, processing. two 73-76, 78-86, and 90. images latent color record layers several emulsion are substan- Modified. tially simultaneously developedprior to Judge participated MARTIN color- time the non-immobilized hearing de- of this but died before case providing unexposed substances was reached. cision requisite achieve the diffusibil- areas ity. processing, type In the second Judge (dissenting WORLEY, Chief integral multilayer photosensitive part). layerwise, processed element agree reasoning and conclu I with the layer being developed emulsion majority save its reversal sions of the color-providing substances associated 53, 66, rejection of 70 and 71. claims therewith, de- immobilized disagree majority’s I conclusion with th'e velopment, diffusible to the rendered respect insofar with to the latter claims substantially layer image-receiving proceed as it rationale development dif- to the time that the are limited same layer. in another fusion occurs aspect al invention as claimed in integral instances, multi- certain hence allowable lowed claim may layer photosensitive element allowing gave for reasons the board types so as to utilize both constructed claim.1 majority comparison proper and not on the basis Whether compare been allowed. allowed other claims which have those claims with *18 upon Margaroli, 50 F.2d which it is See re 318 56 is claim 1400; Ashley, length. necessary F.2d Suffice at CCPA 945, to dwell appealed 1200; say In re McMur that 50 CCPA well settled to it is ry, judged 821. own merits be on their claims must techniques. (Emphasis of ent type Office does disclose a of “de- supplied) following ferred diffusion.” The ex- cerpts Yutzy make clear he type” processing, “second recognized necessity desirability multilayer “integral photo which the of deferred diffusion: layerwise,” processed sensitive element is appears correspond substantially to aspects my In the broadest inven type 56. The tion, objects recited in claim first accomplished are processing,2 ex exposing the several photo to a colored posed layers may all be de graphic emulsion containing element at least veloped prior time diffusion be two silver halide emulsions sensitized gins occur, embraced regions be spec different of the visible language 53 and as fol having trum and each emulsion in lows: timately potential with it associated ly coloring material which diffusible process 53. A as defined in claim non-wandering during coating color-providing wherein said sub- development, developing exposed undeveloped stance with associated photographic element with a solution inner areas at least each emulsion agent developing a silver halide layer multilayer, photosentitive of said coloring which renders said material only element af- diffusible rendered regions only nondiffusible exposure in the development ter at least substantial development of the emul layer the next outer emulsion has oc- sions, rendering coloring material curred. only regions unexposed photographic product A70. as set placing emulsions diffusible and forth in wherein said color- emulsions in intimate contact with an providing associated substances simultaneously absorbent surface to photosentitive at least the inner emul- coloring cause the diffusible material layers adapted sion rendered be imagewise diffuse the emulsions to liquid composition diffusible said into the surface. absorbent develop- at least substantial after * * * photosensi- ment of next outermost three-layer In a silver halide layer tive emulsion silver halide has photog- material for subtractive color (Emphasis supplied) occurred. raphy blue, green and red-sensitive layers light normally contain, respectively, claims, interpreted
I read those cyan yellow, magenta dyes disclosure, development or color to allow two, dyes three, layers, formers. color formers emulsion either si- These non-wandering multaneously sequentially, must before dif- be such toas during coating begins any appreciable operations fusion to occur regard early stages during usually extent. It at least negative Yutzy particularly development. con- reference becomes This is pertinent. ventionally by any accomplished There can be doubt sev- large Yutzy means, namely, using very the Pat- eral reference relied Appellants’ specification layers substantially also emulsion has been states: * * * completed. Thus, by diffusibiUty supplied) (Emphasis deferred it is intended to cover situations where Appellants’ specification states: color-providing non-immobilized sub- * * * that, understood stances with an inner associated emul- development, all of the color- sion are rendered diffusible after providing substances are con- development least substantial of an poten- sidered mobile in that outer emulsion has occurred but simul- tially diffusible. Various mechanisms taneously development with the of said may be utilized to create the desired de- emulsion, develop- inner or where color-providing diffusibiUty ferred ** both said inner and outer substances. *19 containing groups necessary operation molecules, molecules for the would seem process gelatin any or of the the transfer which are substantive vehicle, diffusion containing groups appellants by type that diffu- molecules disclosed by unexposed posi- convention- of the which can be mordanted from areas sion mordants, image forming etc. be deferred al or anion material cation tive dyes regions my invention, exposed development formers are or color until they negative proceeded will not diffuse to a sub- selected such that has coating layer during layer degree. or noted: from negative development, As the board stantial the addi- with 53, 54, hint at Claims and 55 appro- by an tional characteristic that diffusibility concept but deferred priate step can in the broadly as to read worded so easily diffuse that after made to so development complete the emul- all negative development the release layers Yutzy render- sion as in opera- into mechanism can be called providing substances color dye color so or tion that unaltered image receiving layer. to the diffusible The Examiner has readily thereupon diffuse former can pointed out where receiving has been sheet which are found certain details placed in contact with the emulsion no error and we find * * * layers. application of references. in * * * * * * dyes couplers are used (Emphasis supplied) or If stage, e., early i. at which too diffuse challenge Appellants the board’s do not during coating development, then claims, analysis scope of those appropri- the association between the failing only “in board erred assert the dye and silver halide is lost ate weight give express requirement separation not be obtained. color will development and that both these claims may dyes or be ren- color formers single by a must effected transfer coating during non-wandering dered composition.” liquid It seems to me by many techniques would in- which do 70 and in claims limitations mordanting,1 precipitation with clude impart patentability the same Similarly, ions, like. metallic dyes and the majority expressed reasons respect can be used color formers from which to claims 52 and combinations, esters chemical such as dependent. the former hydrolyzed appropri- at an which are for claim it reads: As processing to step release ate dye a smaller or color former process A as defined * * * (Em- to wander. molecule color-providing said sub- wherein phasis supplied) initially insoluble in said stances are processing composition, liquid said expressed in concepts are same Those rendering including step process appellants’ language in slightly different color-providing said nonimmobilized examiner. specification, noted out,4 liquid pro- pointed soluble in said substances Indeed, the examiner providing substance which will diffuse examiner stated: * * stages * problem only early after at least of de- way negative image velopment is con- generally in the same solved any Yutzy. Both defer sidered feature both color-providing sub- The de- last mentioned references. diffusion development diffusion of such as ferred substances until stances dye developers supplies con- image is inherent in the mono- negative gone process specifically least chromatic disclosed has mechanism trol through by Rogers (606), stages. early How instance. its lack of transfer evident else posed ex- mechanism critical any negative exemplified areas emulsion con- the one case is * * * patents. That ? trolled Land concept providing a color- say, *20 cessing composition whereby they may izing” high- couplers “through the use of image-receiving layer. boiling-point earlier, diffuse to said solvents.” noted As Yutzy mordants, discloses use or es- specification several discloses hydrolyzed appro- ters “which are anat techniques by which those limitations priate step processing release parently among accomplished, dye or color former as a smaller are: molecule to wander.” The use of aux- an (1) incorporating color material in iliary developer (4) described in above is “high-boiling, alkali- water- specifically claimed more such liquid,” whereupon immiscible contact 67, 68, majority and which does processing liquid renders the not allow. I see no valid reason “increasingly color material diffusible reaching a different conclusion with process;” a differential extraction spect (2) employing the color material I would affirm the decision below form, whereby particle it “is more entirety. its slowly molecularly if dissolved than dispersed, permitting ef- thus one
fect the desired deferred diffusibil-
ity;” associating
(3) the color material with “temporary renders mordant” which “temporarily insoluble;” subsequent
contact with the solution
hydrolyzes “insolubilizing off sub- stituent” and renders the color ma- diffusible; terial Raymond Application LeBLANC, F. John Boris Puscasu and Nicita. (4) employing auxiliary developer, an Appeal No. 7632. product
the oxidation of which reacts dye developer with unoxidized while United States Court of Customs latter “is still in an immobile con- Appeals. and Patent dition, i. e. to its solubilized 10,1966. Nov. liquid processing composition,” thereby preventing diffusion dye developer exposed
reacted
areas. argu-
Appellants nowhere separate patentability
ment for the
claim 66. The examiner board have
pointed many out that above tech- niques encompassed lan- within the broad
guage suggested by of claim 66 Yutzy Land, Rogers, more Land, example, references. mixes high- developers
color material and in a
boiling solvent “which has been found introducing
beneficial for and maintain- ing coupler materials within emulsion
layers;” developers employed possess good solubility in
“low alkali but have solubility high-boiling-point sol- disclosing Rogers,
vent.” in addition to relatively dye developers “in use
large sizes,” particle discloses “immobil-