Ex Parte Dessauer

Board of Patent Appeals and Interferences

Dec 1, 2010

10656503 (B.P.A.I. Dec. 1, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROLF DESSAUER
____________

Appeal 2009-013696
Application 10/656,503
Technology Center 1700
____________

Before BRADLEY R. GARRIS, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-013696
Application 10/656,503

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision2 finally rejecting claims 1-25, 33-36, and 38-41.3 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appellant’s invention is directed to:
compositions, articles, and systems using a color forming
composition, comprising a dye precursor composition including
a phthalocyanine precursor and a binder, and an infrared
absorber admixed with or in thermal contact with the dye
precursor composition; where the color forming composition is
configured for development in less than about 1 msec when
exposed to about 30 mW to about 50 mW of infrared radiation
at a spot size from about 1 µm to about 200 µm.

(App. Br. 11.)
The Examiner maintains4, and Appellant requests review of (App. Br.
9-10), the following grounds of rejection:
1. Claims 1, 4-10, 12-15, and 39-41 under 35 U.S.C. § 103(a) as
unpatentable over RD 392195 and JP 3576, in view of Kawauchi7 and/or
Satake8 (Ans. 4-8);
2. Claims 1, 4-10, 12-15, 17, 20-22, 24, 25, and 39-41 under 35
U.S.C. § 103(a) as unpatentable over RD 39219 and JP 357, in view of
Fleming 5369 and Anderson10 (Ans. 8-10);

2 Final Office Action mailed Jul. 21, 2008 (“Final”).
3 Appeal Brief filed Dec. 9, 2008 (“App. Br.”).
4 Examiner’s Answer mailed Apr. 14, 2009.
5 Infrared Printout Systems Based on Phthalocyanine Precursors, in 392019
Research Disclosure Journal 1-2 (December 1996) (hereafter RD 39219).
6 Sawanori et al., JP 58008357, pub. Feb. 15, 1983.
7 U.S. 2001/0039895 A1, pub. Nov. 15, 2001.
8 Satake et al., U.S. 5,470,816, issued Nov. 28, 1995.
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Application 10/656,503

3. Claims 1, 4-15, 17, 20-25, and 39-41 under 35 U.S.C. § 103(a) as
unpatentable over RD 39219 and JP 357, in view of Fleming 536 and
Anderson, in view of Boggs11 (Ans. 10);
4. Claims 1-10, 12-22, 24, 25, and 39-41 under 35 U.S.C. § 103(a) as
unpatentable over RD 39219 and JP 357, combined with Fleming 536 and
Anderson, in view of either Perkins12 or Fleming 70413 (Ans. 11); and
5. Claims 1-10, 12-22, 24, 25, 33-36, and 38-41 under 35 U.S.C. §
103(a) as unpatentable over RD 39219 and JP 357, combined with Fleming
536 and Anderson and either Perkins or Fleming 704, further in view of
Gravesteijn14 and Melles15 (Ans. 12).
Independent claim 1, the broadest appealed claim, is reproduced
below from the Claims Appendix to the Appeal Brief:
1. A color forming composition, comprising:

a) a dye precursor composition including a phthalocyanine precursor
and a binder; and

b) an infrared absorber admixed with or in thermal contact with the
dye precursor composition,

said color forming composition being configured for development in less
than about 1 msec when exposed to about 30 mW to about 50 mW of
infrared radiation at a spot size from about 1 µm to about 200 µm.

9 Fleming et al., U.S. 5,362,536, issued Nov. 08, 1994.
10 Anderson et al., WO 03/032299 A2, pub. Apr. 17, 2003.
11 Boggs et al., U.S. 5,236,884, issued Aug. 17, 1993.
12 Perkins et al., U.S. 2,957,004, issued Oct. 18, 1960.
13 Fleming et al., U.S. 4,284,704, issued Aug. 18, 1981.
14 Gravesteijn et al., U.S. 4,508,811, issued Apr. 02, 1985.
15 Diode Laser Assembly Selection Matrix, Melles Griot 49-3 – 49-5
(1995/96) (hereafter Melles).
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Application 10/656,503

The remaining independent claims (claims 16, 17, and 33) include all of the
limitations recited in claim 1.
Appellant relies on the same arguments in traversing all five grounds
of rejection. (See App. Br. 23-26.) These arguments raise the following
issue: Are the facts and reasons relied on by the Examiner sufficient to
establish that the combined teachings of the references would result in a
color forming composition which is inherently “configured for development
in less than about 1 msec when exposed to about 30 mW to about 50 mW of
infrared radiation at a spot size from about 1 µm to about 200 µm” as recited
in independent claims 1, 16, 17, and 33? (See App. Br. 17.)
We answer this question in the affirmative for the reasons that follow.
The appealed claims require a composition “configured for
development in less than about 1 msec when exposed to about 30 mW to
about 50 mW of infrared radiation at a spot size from about 1 µm to about
200 µm” (claims 1, 16, 17, and 33). “[T]his recitation goes to the sensitivity
of the composition.” (App. Br. 17; see also, Ans. 6, l. 5.)
According to the Specification (“Spec.” filed Sep. 5, 2003),
“‘development’ . . . refers to the interaction or reaction which reduces
substantially all of the phthalocyanine precursor to produce a visible change
in color through reduction to the corresponding phthalocyanine dye.” (Spec.
4:3-6.) “‘[O]ptimization’ and ‘optimized’ refer to a process of selection of
components of the color forming composition which results in a rapidly
developable composition under a fixed period of exposure to infrared
radiation” (Spec. 5:20-23), e.g., for a period of 1 msec (Spec. 5:26) using
typical commercial IR lasers which operate at wavelengths of 780 and 830
nm (see Spec. 13:17-20). The Specification states that “[t]he color forming
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Appeal 2009-013696
Application 10/656,503

compositions . . . can be optimized by adjusting the concentrations and type
of infrared absorber, phthalocyanine precursor, and binder.” (Spec. 17:32-
18:2.)
The Specification states that the phthalocyanine precursor can be
present in an amount of from 1 to about 40% (Spec. 11:18-19) and identifies
suitable phthalocyanine precursors as including LUSANE-type precursors
produced by the method disclosed in US 2,772,284, issued Nov. 27, 1956 to
Barnhart (Spec. 10:1-3 (incorporating this patent by reference)). In Example
5, Barnhart discloses heating a complex leuco compound for copper
phthalocyanine at 200 ºC for 15 minutes to form a blue residue. According
to the Specification, “[s]uitable binders can include, but are not limited to,
polymeric materials such as polyacrylate from monomers and oligomers,
polyvinyl alcohols, polyvinyl pyrrolidines, polyethylenes, polyphenols or
polyphenolic esters, polyurethanes, acrylic polymers, and mixtures thereof.”
(Spec. 11:26-29.) The Specification identifies numerous suitable inorganic
and organic compounds which are suitable for use as the infrared absorber
(see Spec. 14:8-15:5), and indicates that “[t]he infrared absorber can be
present in the color forming composition in an amount of from about 0.001
wt% to about 10 wt%, and typically, from about 0.5 wt% to about 1 wt%,
although other weight ranges may be desirable depending on the activity of
the particular absorber” (Spec. 13:1-4).
Appellant does not dispute the Examiner’s findings that: (1) the
combination of RD 39219 and JP 357 teaches forming photothermographic
recording materials using phthalocyanine precursors which form a
phthalocyanine which colors at temperatures of less than 150 ºC, an IR
absorber, and a binder of the type used by Appellant, e.g., ethyl cellulose
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Application 10/656,503

(Ans. 4); (2) the secondary references teach the use of the same IR absorbers
used by Appellant in amounts which fall within the ranges disclosed in
Appellant’s Specification (see, e.g., Ans. 4-6, 8-9); and (3) the secondary
references teach the use of conventional IR lasers as a recording light source
which operate at a power and spot size which falls within Appellant’s
claimed ranges (Ans. 5, 8). (See generally App. Br. 11-26; Rep. Br. 4-5.)
Appellant has not attempted to refute the Examiner’s proposed
motivation for combining the references. (See generally, App. Br. 14-26;
Rep. Br. 4-8.) Rather, Appellant contends the Examiner’s findings are not
sufficient to establish that the proposed combination would result in a
composition which inherently possesses the claimed sensitivity. (Id.)
Appellant states: “the present references teaches [sic] compositional
elements that may provide a sensitive color forming composition, such a
possibility is not enough to establish inherency.” (App. Br. 22.)
Appellant’s arguments have been fully addressed by the Examiner in
the Answer and are unpersuasive for the reasons stated therein. (See Ans. 6-
17.)
“The discovery of a new property or use of a previously known
composition, even when that property and use are unobvious from the prior
art, can not impart patentability to claims to the known composition.” In re
Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). Cf. In re Cruciferous Sprout
Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (discussing the law on inherent
anticipation) (“Inherency is not necessarily coterminous with the knowledge
of those of ordinary skill in the art. Artisans of ordinary skill may not
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Application 10/656,503

recognize the inherent characteristics or functioning of the prior art.”)
(citations omitted).16
The Examiner identified teachings of phthalocyanine precursors, IR
absorbers, and binders which would reasonably appear to have the same
properties as those used by Appellant, and provided a detailed explanation as
to why it would have been obvious to have selected and combined these
components in the same amounts used by Appellant. (See Ans. 3-17.)
Accordingly, the Examiner had a reasonable basis for concluding that the
resultant color forming composition would inherently be “configured for
development in less than about 1 msec when exposed to about 30 mW to
about 50 mW of infrared radiation at a spot size from about 1 µm to about
200 µm” as recited in independent claims 1, 16, 17, and 33. (Cf. App. Br.
19 (noting that sensitivity of the composition depends on the nature and
properties, as well as the concentrations of the IR absorber, phthalocyanine
precursor, and binder).)
[W]here the Patent Office has reason to believe that a
functional limitation asserted to be critical for establishing
novelty in the claimed subject matter may, in fact, be an
inherent characteristic of the prior art, it possesses the authority
to require the applicant to prove that the subject matter shown
to be in the prior art does not possess the characteristic relied
on.

16 See also Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985), aff'd mem., 795
F.2d 1017 (Fed. Cir. 1986) (holding that the recognition of another
advantage flowing naturally from following the suggestion of the prior art
cannot be the basis for patentability when the difference would otherwise be
obvious).

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Appeal 2009-013696
Application 10/656,503

In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (quoting In re
Swinehart, 439 F.2d 210, 213 (C.C.P.A. 1971)). See also, In re Crish, 393
F.3d 1253, 1259 (Fed. Cir. 2004) (quoting Spada, 911 F.2d at 708 n.3)
(“[W]hen the prior art evidence reasonably allows the PTO to conclude that
a claimed feature is present in the prior art, the evidence ‘compels such a
conclusion if the applicant produces no evidence or argument to rebut it.’”).
Appellant’s arguments fail to establish that the totality of the facts and
reasons relied on by the Examiner are insufficient to provide a reasonable
basis for the Examiner’s determination that the combined teachings of the
references would result in a composition inherently possessing the claimed
sensitivity. Appellant has not provided evidence which demonstrates that
the Examiner’s proposed combination would not result in a composition
which inherently possesses the claimed sensitivity.
Accordingly, we sustain all five grounds of rejection. The Examiner’s
decision to reject claims 1-25, 33-36, and 38-41 is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED

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