Ex Parte GoreDownload PDFBoard of Patent Appeals and InterferencesJan 5, 201010956180 (B.P.A.I. Jan. 5, 2010) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES _______________ Ex parte MAKARAND P. GORE ______________ Appeal 2009-007066 Application 10/956,180 Technology Center 1700 _______________ Decided: January 5, 2010 _______________ Before EDWARD C. KIMLIN, CHARLES F. WARREN, and PETER F. KRATZ, Administrative Patent Judges. WARREN, Administrative Patent Judge. DECISION ON APPEAL Applicant appeals to the Board from the decision of the Primary Examiner finally rejecting claims 1, 2, 5-15, 37-40, and 42-49 in the Office Action mailed February 12, 2008. Claims 3 and 41 are allowed. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a) (2007). We affirm-in-part the decision of the Primary Examiner. Appeal 2009-007066 Application 10/956,180 2 Claims 1, 37, and 38 illustrate Appellant’s invention of a color forming composition, and are representative of the claims on appeal: 1. A color forming composition, comprising: a) a color former, said color former being a spiro dye; b) a radiation antenna admixed with or in thermal contact with the color former; and c) a stabilizer capable of stabilization of the color former in a developed state, said color forming composition being coated on an optical disk. 37. The composition of claim 1, wherein the radiation antenna is admixed with the color former. 38. The composition of claim 1, wherein the radiation antenna is present in an immediately adjacent layer with respect to the color former. The Examiner relies upon the evidence in this reference (Ans. 3): Ikeda 5,876,898 Mar. 2, 1999 Appellant requests review of the ground of rejection under 35 U.S.C. § 103(a) advanced on appeal by the Examiner: 1, 2, 5-15, 37-40, and 42-49 over Ikeda. App. Br. 8; Ans. 3. Opinion The issues in this appeal entail the interpretation of independent claims 1 and 39, and of claims 37 and 38, dependent on claim 1, and claims 47 and 48, dependent on claim 39, by giving the terms thereof the broadest reasonable interpretation in their ordinary usage in context as they would be understood by one of ordinary skill in the art in light of the written description in the Specification unless another meaning is intended by Appellant as established therein, and without reading into the claims any disclosed limitation or particular embodiment. See, e.g., In re ICON Health Appeal 2009-007066 Application 10/956,180 3 and Fitness, Inc., 496 F.3d 1374, 1378-79 (Fed. Cir. 2007); In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004), and cases cited therein; In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997). Independent claim 1, as stated in the preamble, encompass any color forming composition, the composition comprising at least a spiro dye “color former,” any manner of “a radiation antenna admixed with or in thermal contact with the color former,” and any stabilizer having the stated capability. Independent claim 39 contains the same limitations except for the stabilizer ingredient. See, e.g., Exxon Chem. Pats., Inc. v. Lubrizol Corp., 64 F.3d 1553, 1555-58 (“Consequently, as properly interpreted, Exxon’s claims are to a composition that contains the specified ingredients at any time from the moment at which the ingredients are mixed together.”). Claims 1, 38, 39, and 48 The first claim interpretation issue is the interpretation to be made of the language “a radiation antenna admixed with or in thermal contact with the color former” in independent claims 1 and 39. In considering this language in light of the written description in the Specification as well as the language of dependent claims 37, 38, 47, and 48, it is apparent from the plain language “a radiation antenna admixed with . . . the color former,” to which claims 37 and 47 are limited, that the “radiation antenna” is part of the composition, and indeed, can be an organic compound as set forth in dependent claims 10 and 46. See Spec., e.g., 11:11 to 15:5. We cannot, however, reasonably interpret the claim language “a radiation antenna . . . in thermal contact with the color former” in the context of a “color forming composition” of independent claims 1 and 39 in the Appeal 2009-007066 Application 10/956,180 4 same manner. The Specification does contain the disclosure that the “radiation antenna” can be “in thermal contact with the color former” by being included in a polymer matrix in which the color former is dispersed. See Spec., e.g., 15:8-15. Claims 1 and 39 encompass a color forming composition containing “a radiation antenna” included with any polymer matrix resin by reason of the open-ended transitional term “comprising.” See claim 13, dependent on claim 1. See, e.g., Exxon Chem. Pats., 64 F.3d at 1555 (“The claimed composition is defined as comprising - meaning containing at least - five specific ingredients.”). However, the Specification further discloses, and claims 38 and 48 encompass, a layered product wherein “the radiation antenna is present in an immediately adjacent layer with respect to the color former.” See Spec., e.g., 15:15-16. On this record, such a layered product would not constitute a composition that includes “a radiation antenna” and “a color former.” Indeed, Appellant argues claims 38 and 48 on this basis. App. Br. 23 and 27-28; Reply Br. 14 and 16. Thus, in considering the broadest reasonable interpretation for the claim language “a radiation antenna . . . in thermal contact with the color former” in light of the Specification, the same would appear to encompass any manner of material and structure capable of functioning as “a radiation antenna” which is in any manner of thermal contact with “a color former” but external to a “composition” containing the “color former” but not “a radiation antenna.” Thus, we are of the opinion the claim language “a radiation antenna . . . in thermal contact with the color former” is clearly contrary to the other language of claims 1 and 39. Appeal 2009-007066 Application 10/956,180 5 Consequentially, we are of the opinion that the language “a radiation antenna . . . in thermal contact with the color former” of independent claims 1 and 39 taken with the remaining language of these claims does not expressly define a “color forming composition.” Thus, claims 1, 2, 5-15, 38- 40, and 42-46 and 49 are indefinite to the extent that it is impossible to ascertain the propriety of the Examiner’s ground of rejection thereof under 35 U.S.C. § 103(a) over Ikeda without undue speculation. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970); In re Steele, 305 F.2d 859, 862-63 (CCPA 1962). In this respect, the language of a claim, considered as a whole in light of the written description in the Specification as it would be interpreted by one of ordinary skill in the art, must in fact set out and circumscribe the claimed color forming composition with a reasonable degree of precision and particularity in order to comply with 35 U.S.C. § 112, second paragraph. See In re Moore, 439 F.2d 1232, 1235 (CCPA 1971); see also, e.g., In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994); The Beachcombers Int’l. v. WildeWood Creative Prods., 31 F.3d 1154, 1158 (Fed. Cir. 1994); Orthokinetics, Inc. v. Safety Travel Chairs. Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). Accordingly, we reverse the ground of rejection of claims 1, 2, 5-15, 38-40, and 42-46 and 49 under 35 U.S.C. § 103(a) over Ikeda pro forma.1 Claim 37 With respect to the ground of rejection of dependent claim 37 under 1 We have not considered the propriety of the allowance of claims 3 and 41 in these respects. These claims limit claims 1 and 39, on which they respectively depend, only to the extent of specifying a spiro dye specie as the “color former.” Appeal 2009-007066 Application 10/956,180 6 35 U.S.C. § 103(a) over Ikeda, Appellant does not dispute that Ikeda in fact discloses compositions containing spiro dye “color former” compounds, “radiation antenna” compounds, stabilizer compounds, as well as matrix resins, as the Examiner properly finds. Ans. 3-4 and 6, citing Ikeda, e.g., col. 9, ll. 48-62, col. 10, ll. 30-31, and col. 11, ll. 3-16 and 56-59; App. Br., e.g., 15:17-18. Instead, Appellant contends that the language “said color forming composition being coated on an optical disk” of claim 1 patentably distinguishes the claimed color forming composition over the color forming composition disclosed by Ikeda. App. Br. 15:15 to 16:2 and 16:20 to 17:3; Reply Br. 5. Thus, the second claim interpretation issue involves the phrase “said color forming composition being coated on an optical disk” of independent claim 1 which is not limited by dependent claim 37. We determine that this claim phrase plainly indicates that the specified composition is intended to be claimed only to the extent that it is coated on an optical disk, as Appellant argues. App. Br. 15:15-16 and 20-21, 16:22-23; Reply Br. 5:12-16. Thus, we agree with the Examiner that the claim phrase is tantamount to a method or process of use limitation of the claimed composition, which limitation has no place in a product claim. Ans. 4 and 5. See In re Wiggins, 397 F.2d 356, 359 n.4 (CCPA 1968), and cases cited therein (“[A]ppellant’s discovery of the analgesic properties of ‘O2’ and of a composition containing it could properly be claimed only as a method or process of using that compound or composition in accordance with the provisions of 35 U.S.C. 100(b) and 101.”). To the extent that claim 37 can be interpreted as being drawn to an Appeal 2009-007066 Application 10/956,180 7 optical disk coated with a composition as claimed, we agree with the Examiner that Ikeda teaches that the disclosed compositions can form a heat sensitive recording layer on a support in preparing heat sensitive recording material. Ans. 3-5. See Ikeda, e.g., abstract, and col. 1, ll. 5-25, col. 2, ll. 44-67, col. 7, l. 61 to col. 8, l. 4, col. 11, l. 60 to col. 12, l. 18, and col. 13, ll. 35-41. Indeed, while Appellant contends that an “optical disk” is not disclosed by Ikeda, we find that the substrate on which a heat sensitive recording layer is formed can include materials in which information can be “optically” recorded. Ikeda col. 13, ll. 36-41. See App. Br. 16, citing Ikeda col. 11, l. 60, to col. 12, l. 7. Thus, on this record, we determine that one of ordinary skill in this art routinely following the teachings of Ikeda would have reasonably applied a layer of heat sensitive recording layer to an optical disk substrate. Claim 47 With respect to the ground of rejection of dependent claim 47 under 35 U.S.C. § 103(a) over Ikeda, Appellant again does not dispute that Ikeda in fact discloses compositions containing spiro dye “color former” compounds and “radiation antenna” compounds as well as matrix resins, as the Examiner properly finds. Ans. 3-4 and 6, citing Ikeda, e.g., col. 9, ll. 48-62, col. 10, ll. 30-31, and col. 11, ll. 3-16 and 56-59; App. Br., e.g., 15:17-18. Instead, Appellant contends that Ikeda does not teach a composition which is formulated to have the claimed developmental characteristic specified in claim 39 by the limitation “wherein the color former and radiation antenna are present in an amount such that the color forming composition is optimized for development in less than about Appeal 2009-007066 Application 10/956,180 8 1 millisecond using radiation at from about 0.3 J/cm2 to less than 3.0 J/cm2.” App. Br. 23-26; Reply Br. 6-8. Thus, the issue with respect to claim 47 involves whether Ikeda would have disclosed the “amount” of each of “a color former” and “a radiation antenna admixed with . . . the color former” present in the claimed composition such that “the color forming composition is optimized for development in less than about 1 millisecond using radiation at from about 0.3 J/cm2 to less than 3.0 J/cm2” as set forth in independent claim 39, which is not limited by dependent claim 47. Appellant argues that the term “optimized” is described in the Specification wherein it is stated that the tern refers “to a process for selection of components of the color composition which results in a rapidly developable composition under a fixed exposure to radiation at a specific power.” Spec. 5:16-19; App. Br. 24; Reply Br. 6. Appellant submits that Ikeda’s compositions are not taught to be formulated to have this claimed developmental characteristic, pointing out that Ikeda discloses that known infrared absorbers such as, among other things, phthalocyanine derivatives, are used when recording is conducted with infrared or laser beam. App. Br. 23-26, citing Ikeda col. 11, ll. 56-59; Reply Br. 6-8. The Examiner finds that Ikeda’s compositions containing the same ingredients, including phthalocyanine derivatives, as claimed, would be optimized by one of ordinary skill in this art with respect to the amounts of each of the ingredients, and thus obtain the claimed functional features specified in claim 39. Ans. 4 and 6. We find no disclosure in Ikeda specifying the amount of the spiro color former or the phthalocyanine infrared absorber materials in the Appeal 2009-007066 Application 10/956,180 9 disclosed coating compositions. See Ikeda, e.g., col. 8, l. 5 to col. 11, l. 59, particularly col. 11, ll. 56-59. Thus, on this record, as the Examiner points out, one of ordinary skill in this art would have determined the workable or optimum range for the ingredients disclosed by Ikeda to obtain the desired characteristics for the compositions taught by Ikeda, including the desired recording level when phthalocyanine infrared absorbers are used, by routine experimentation. Ikeda col. 11, ll. 56-59. See, e.g., In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.”); In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.”). Therefore, we are of the view the Examiner has established that it reasonably appears that compositions containing at least a spiro color former and a phthalocyanine derivative infrared absorber disclosed to one of ordinary skill in this art by Ikeda are identical or substantially identical to the claimed color forming compositions encompassed by claim 47 even though, as Appellant points out, Ikeda does not teach or suggest that such compositions have the property of “wherein the color former and radiation antenna are present in an amount such that the color forming composition is optimized for development in less than about 1 millisecond using radiation at from about 0.3 J/cm2 to less than 3.0 J/cm2.” Thus, Appellant’s burden is to patentably distinguish the claimed color forming compositions over the teachings of Ikeda by argument and/or objective evidence, even though the ground of rejection is under § 103(a). See, e.g., In re Spada, 911 F.2d 705, Appeal 2009-007066 Application 10/956,180 10 708 (Fed. Cir. 1990) (“[W]hen the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.”); In re Best, 562 F.2d 1252, 1254-56 (CCPA 1977);2 In re Skoner, 517 F.2d 947, 950-51 (CCPA 1975) (“Appellants have chosen to describe their invention in terms of certain physical characteristics . . . . Merely choosing to describe their invention in this manner does not render patentable their method which is clearly obvious in view of [the reference].” (citation omitted)); see also, e.g., In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (“‘On appeal to the Board, an applicant can overcome a rejection by showing insufficient evidence of prima facie obviousness or by rebutting the prima facie case with evidence of secondary indicia of nonobviousness.’”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). We considered the totality of the record in light of Appellant’s arguments, and based thereon, we are of the opinion Appellant has not carried this burden. See, e.g., In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“After evidence or argument is submitted by the applicant in 2 Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. § 102, on ‘prima facie obviousness’ under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products. (footnote and citations omitted). Appeal 2009-007066 Application 10/956,180 11 response, patentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument.”) (citing, inter alia, Spada, 911 F.2d at 707 n.3). We fail to find any basis in the disclosure with respect to the term “optimized” in the Specification which casts the limitation “the color forming composition is optimized for development in less than about 1 millisecond using radiation at from about 0.3 J/cm2 to less than 3.0 J/cm2” in a different light than we have considered this limitation above. Indeed, the disclosure with respect to this term at page 5, lines 16-19, of the Specification involves “a process for selection of components of the color composition” and not the “amount” of the ingredients specified in claim 39, which claim encompasses compositions containing spiro color former and phthalocyanine infrared absorber ingredients disclosed by Ikeda. In any event, on this record, the fact that the Ikeda does not describe the “development” property specified in independent claim 39 does not establish the patentability of dependent claim 47. See, e.g., Skoner, 517 F.2d at 950-51. Conclusion: Claims 37 and 47 Accordingly, based on our consideration of the totality of the record before us, we have weighed the evidence of obviousness found in Ikeda with Appellant’s countervailing evidence of and argument for nonobviousness and conclude, by a preponderance of the evidence and weight of argument, that the claimed invention encompassed by appealed claims 37 and 47 would have been obvious as a matter of law under Best, 562 F.2d at 1254-56. Appeal 2009-007066 Application 10/956,180 12 35 U.S.C. § 103(a). In summary, we have affirmed the ground of rejection of claims 37 and 47 under 35 U.S.C. § 103(a) over Ikeda, and reversed the ground of rejection of claims 1, 2, 5-15, 38-40, and 42-46 and 49 under 35 U.S.C. § 103(a) over Ikeda pro forma. The Primary Examiner’s decision is affirmed-in-part. 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)(iv). AFFIRMED-IN-PART PL Initial: sld HEWLETT-PACKARD COMPANY INTELLECTUAL PROPERTY ADMINISTRATION 3404 E. HARMONY ROAD MAIL STOP 35 FORT COLLINS, CO 80258 Copy with citationCopy as parenthetical citation