Application of Edwin H. Land and Howard G. Rogers

WORLEY, Chief Judge

(dissenting in part).

I agree with the reasoning and conclusions of the majority save its reversal of the rejection of claims 53, 66, 70 and 71. I disagree with th'e majority’s conclusion with respect to the latter claims insofar as it appears to proceed on the rationale that the claims are limited to the same aspect of the invention as claimed in allowed claim 56, hence allowable for the reasons the board gave for allowing that claim. 1

As the majority observes, the disclosed invention is capable of expression in various ways. “Deferred diffusion” is one expression appellants use. What the majority apparently fails to recognize, however, is that there are several kinds of “deferred diffusion” disclosed by appellants, as exemplified by the following pertinent disclosure:

Another object of this invention is to provide diffusion transfer-reversal processes wherein diffusion of the color-providing substances associated with at least one emulsion layer of an integral multilayer photosensitive element to an image-receiving layer is controlled in such a way as to be deferred until at least substantial development of the latent color record contained in said emulsion layer has occurred.

* * * * * *

In general, it may be stated that the desired deferred diffusibility of color-providing substances may be obtained by two types of processing. In one, the latent color record images in the several emulsion layers are substantially simultaneously developed prior to the time the non-immobilized color-providing substances in unexposed areas achieve the requisite diffusibility. In the second type of processing, the integral multilayer photosensitive element is processed layerwise, one emulsion layer being developed and the color-providing substances associated therewith, but not immobilized by development, rendered diffusible to the image-receiving layer substantially prior to the time development and diffusion occurs in another layer. In certain instances, an integral multilayer photosensitive element may be so constructed as to utilize both types *885 of processing techniques. (Emphasis supplied)

The “second type” of processing, in which the “integral multilayer photosensitive element is processed layerwise,” appears to correspond substantially to that recited in claim 56. The first type of processing, 2 in which the several exposed emulsion layers may all be developed prior to the time diffusion begins to occur, appears to be embraced by the language of claims 53 and 70 as follows:

53. A process as defined in claim 52, wherein said color-providing substance associated with undeveloped areas of at least each inner emulsion layer of said multilayer, photosentitive element is rendered diffusible only after at least substantial development of the next outer emulsion layer has occurred.

70. A photographic product as set forth in claim 69, wherein said color-providing substances associated with at least the inner photosentitive emulsion layers are adapted to be rendered diffusible in said liquid composition only after at least substantial development of the next outermost photosensitive silver halide emulsion layer has occurred. (Emphasis supplied)

I read those claims, interpreted in light of the disclosure, to allow development of two, or three, emulsion layers, either simultaneously or sequentially, before diffusion begins to occur to any appreciable extent. It is in that regard that the Yutzy reference becomes particularly pertinent. There can be no doubt that the Yutzy reference relied on by the Patent Office does disclose a type of “deferred diffusion.” The following excerpts from Yutzy make it clear that he recognized the necessity and desirability of deferred diffusion:

In the broadest aspects of my invention, the objects are accomplished by exposing to a colored subject a photographic element containing at least two silver halide emulsions sensitized to different regions of the visible spectrum and each emulsion having intimately associated with it a potentially diffusible 3 coloring material which is non-wandering during coating and development, developing the exposed photographic element with a solution of a silver halide developing agent which renders said coloring material nondiffusible only in the regions of exposure and development of the emulsions, rendering the coloring material only in the unexposed regions of the emulsions diffusible and placing the emulsions in intimate contact with an absorbent surface to simultaneously cause the diffusible coloring material in the emulsions to diffuse imagewise into the absorbent surface.

* * * In a three-layer silver halide material for subtractive color photography the blue, green and red-sensitive layers normally contain, respectively, yellow, magenta and cyan dyes or color formers. These dyes or color formers must be such as to be non-wandering during the coating operations and usually during at least the early stages of negative development. This is conventionally accomplished by any of several means, namely, using very large *886 molecules, molecules containing groups which are substantive to gelatin or the vehicle, molecules containing groups which can be mordanted by conventional cation or anion mordants, etc. In my invention, dyes or color formers are selected such that they will not diffuse from layer to layer during coating or negative development, with the additional characteristic that by an appropriate step in the processing they can be made to diffuse easily so that after a negative development the release mechanism can be called into operation so that unaltered dye or color former can thereupon diffuse readily to a receiving sheet which has been placed in contact with the emulsion layers. * * *

* * * If dyes or couplers are used which diffuse at too early a stage, i. e., during coating or development, then the association between the appropriate dye and silver halide is lost and color separation will not be obtained. The dyes or color formers may be rendered non-wandering during coating by many techniques which would include mordanting,1 precipitation with metallic ions, and the like. Similarly, dyes or color formers can be used in chemical combinations, such as esters which are hydrolyzed at an appropriate step in the processing to release the dye or color former as a smaller molecule to wander. * * * (Emphasis supplied)

Those same concepts are expressed in slightly different language in appellants’ specification, as noted by the examiner. Indeed, as the examiner pointed out, 4 it would seem necessary for the operation of any diffusion transfer process of the type disclosed by appellants that diffusion from unexposed areas of the positive image forming material be deferred until development of the exposed regions of the negative has proceeded to a substantial degree. As the board noted:

Claims 53, 54, and 55 hint at the concept of deferred diffusibility but are so broadly worded as to read on the complete development of all the emulsion layers as in Yutzy prior to rendering the color providing substances diffusible to the image receiving layer. The Examiner has pointed out where certain details of the claims are found in the prior art and we find no error in the application of the references. * * * (Emphasis supplied)

Appellants do not challenge the board’s analysis of the scope of those claims, but only assert the board erred “in failing to give weight to the express requirement in these claims that both development and transfer must be effected by a single liquid composition.” It seems to me the limitations in claims 53, 70 and 71 do not impart patentability for the same reasons expressed by the majority with respect to claims 52 and 69, from which the former are dependent.

As for claim 66, it reads:

66. A process as defined in claim 52, wherein said color-providing substances are initially insoluble in said liquid processing composition, said process including the step of rendering said nonimmobilized color-providing substances soluble in said liquid pro *887 cessing composition whereby they may diffuse to said image-receiving layer.

The specification discloses several techniques by which those limitations apparently are accomplished, among which are:

(1) incorporating the color material in a “high-boiling, water- and alkali-immiscible liquid,” whereupon contact by the processing liquid renders the color material “increasingly diffusible by a differential extraction process;”

(2) employing the color material in particle form, whereby it “is more slowly dissolved than if molecularly dispersed, thus permitting one to effect the desired deferred diffusibility;”

(3) associating the color material with a “temporary mordant” which renders it “temporarily insoluble;” subsequent contact with the processing solution hydrolyzes off the “insolubilizing substituent” and renders the color material diffusible;

(4) employing an auxiliary developer, the oxidation product of which reacts with unoxidized dye developer while the latter “is still in an immobile condition, i. e. prior to its being solubilized by the liquid processing composition,” thereby preventing diffusion of the reacted dye developer from exposed areas.

Appellants nowhere present an argument for the separate patentability of claim 66. The examiner and board have pointed out that many of the above techniques encompassed within the broad language of claim 66 are suggested by one or more of the Land, Rogers, or Yutzy references. Land, for example, mixes color material and developers in a high-boiling solvent “which has been found beneficial for introducing and maintaining coupler materials within emulsion layers;” the developers employed possess “low solubility in alkali but have good solubility in a high-boiling-point solvent.” Rogers, in addition to disclosing the use of dye developers “in relatively large particle sizes,” discloses “immobilizing” couplers “through the use of high-boiling-point solvents.” As noted earlier, Yutzy discloses use of mordants, or esters “which are hydrolyzed at an appropriate step in the processing to release the dye or color former as a smaller molecule to wander.” The use of an auxiliary developer described in (4) above is claimed more specifically in such claims as 67, 68, and 76 which the majority does not allow. I see no valid reason for reaching a different conclusion with respect to claim 66.

I would affirm the decision below in its entirety.

. Whether it is proper for the majority to compare those claims with allowed claim 56 is a question upon which it is not necessary to dwell at length. Suffice it to say it is well settled that appealed claims must be judged on their own merits and not on the basis of a comparison with other claims which have been allowed. See In re Margaroli, 318 F.2d 348 , 50 CCPA 1400; In re Ashley, 315 F.2d 945 , 50 CCPA 1200; and In re McMurry, 230 F.2d 442 , 43 CCPA 821.

. Appellants’ specification also states:

* * * Thus, by deferred diffusibiUty it is intended to cover situations where non-immobilized color-providing substances associated with an inner emulsion are rendered diffusible after at least substantial development of an outer emulsion has occurred but simultaneously with the development of said inner emulsion, or where development of both said inner and outer emulsion layers has been substantially completed. (Emphasis supplied)

. Appellants’ specification states:

* * * It is to be understood that, prior to development, all of the color-providing substances present are considered mobile in that they are potentially diffusible. Various mechanisms may be utilized to create the desired deferred diffusibiUty of the color-providing substances. * * *

. The examiner stated:

* * * It appears that the problem is solved generally in the same way by both appellants and Yutzy. Both defer diffusion of the color-providing substances until the development of the negative image which supplies the control mechanism has at least gone through its early stages. * * * the only critical mechanism evident in the case is the one exemplified in any of the Rogers or Land patents. That is to say, the concept of providing a color-providing substance which will diffuse only after at least early stages of development of negative image is considered a feature of any one of the last mentioned references. The deferred diffusion of substances such as dye developers is inherent in the monochromatic process specifically disclosed by Rogers (606), for instance. How else is the lack of transfer from exposed areas of negative emulsion controlled ? * * *