Ex Parte Gore

Board of Patent Appeals and Interferences

Jan 5, 2010

10956180 (B.P.A.I. Jan. 5, 2010)

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