Ex Parte Gore

Board of Patent Appeals and Interferences

Oct 15, 2010

11254273 (B.P.A.I. Oct. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MAKARAND P. GORE
____________

Appeal 2009-012632
Application 11/254,273
Technology Center 1700
____________

Before BRADLEY R. GARRIS, BEVERLY A. FRANKLIN, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1, 4, 5, and 22-31. We have jurisdiction under 35
U.S.C. § 6.
We REVERSE.

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 2009-012632
Application 11/254,273

Appellant claims an imaging medium comprising a substrate having
an imaging composition disposed thereon, the imaging composition
comprising a matrix, a color-forming composition, and "at least two
photoinitiators dispersed or dissolved in said matrix, wherein at least one of
said photoinitiators absorbs wavelengths shorter than 400 nm and at least
one of said photoinitiators absorbs wavelengths greater than 450 nm" (claim
1).
Representative claim 1 reads as follows:
1. An, imaging medium comprising:

a substrate, and

an imaging composition disposed on said substrate, said imaging
composition comprising:

a matrix;

a color-forming composition containing a color former and a
developer dispersed or dissolved in said matrix; and

at least two photoinitiators dispersed or dissolved in said
matrix, wherein at least one of said photoinitiators absorbs
wavelengths shorter than 400 nm and at least one of said
photoinitiators absorbs wavelengths greater than 450 nm.

Under 35 U.S.C. § 103(a), the Examiner rejects claims 1, 4, 5, 22, 25-
27, and 31 as being unpatentable over Obayashi (US Patent 6,329,120 B1
issued December 11, 2001) and rejects claims 232, 24, and 28-30 as being

2 The Examiner in the Answer has overlooked including claim 23 in this
rejection (see Ans. 3; cf., App. Br. 4). This oversight by the Examiner is
harmless, particularly in view of our disposition of the appeal.
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Appeal 2009-012632
Application 11/254,273

unpatentable over Obayashi in view of Nishikubo (US Patent 6,867,282 B2
issued March 15, 2005).
The Examiner's rejection based on Obayashi is set forth below:
Obayashi et a1 disclose an image recording material
which may comprise a polymeric material (matrix),
initiators, UV absorbers including conventional compounds
such as benzophenones and IR sensitizing dyes, and a
compound which changes the absorption which may be a
leuco dye in a microcapsule and a corresponding activator
(initiator; column 31, line 66 to column 32, line 30; column
82, lines 59-65, and column 83, lines 39-56). IR dyes are
employed in the materials of the reference. It would have
been obvious to one of ordinary skill in the art to prepare the
material of the reference choosing to employ a leuco dye in a
microcapsule to react with the initiator as well as add a UV
absorber. The material is deemed to be capable of laser
marking.

(Ans. 3).
"[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
approval in KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007).
We agree with Appellant that the Examiner has provided no
articulated reasoning with rational underpinning to support the conclusion
that it would have been obvious to provide the imaging medium of Obayashi
with two photoinitiators which absorb different wavelengths as required by
the appealed claims (App. Br. 5-12; Reply Br. 2-4). The Examiner's
obviousness conclusion seems to propose combining Obayashi's ultraviolet
absorbent (col. 82, ll. 59-65) and infrared absorption dye (col. 83, ll. 39-56)
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Appeal 2009-012632
Application 11/254,273

(Ans. 3). However, the Examiner has provided no reasoning with rational
underpinning in support of such a combination. Contrary to such a
combination, an ultraviolet absorbent would appear to be incapable of
absorbing the infrared wavelengths which are used with the infrared
absorption dye of Obayashi.
On this record, the Examiner's rejection based on Obayashi is
supported by mere conclusory statements rather than articulated reasoning
with rational underpinning. It follows that we cannot sustain the § 103
rejection over Obayashi. Because the Examiner does not rely on Nishikubo
to cure the above discussed deficiencies of Obayashi, we also cannot sustain
the § 103 rejection over Obayashi in view of Nishikubo.
The decision of the Examiner is reversed.
REVERSED

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