Ex Parte Gore et al

Board of Patent Appeals and Interferences

Nov 3, 2008

11180410 (B.P.A.I. Nov. 3, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MAKARAND P. GORE,
JAYPRAKASH BHATT, and
VLADEK P. KASPERCHIK
____________

Appeal 2008-3516
Application 11/180,410
Technology Center 1700
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Decided: November 3, 2008
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Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-43. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.

Appeal 2008-3516
Application 11/180,410

Appellants claim a color forming composition comprising a color
former, a sulfonamide developer, and a radiation absorber that absorbs
electromagnetic radiation and generates heat that causes selective
combination of the color former and sulfonamide developer (claim 1).
Appellants also claim a method of forming a color forming composition
(claim 23) and a method of forming an image using such a composition
(claim 26).
Representative independent claim 1 reads as follows:
1. A color forming composition, comprising:

at least one color former;

at least one sulfonamide developer; and

a radiation absorber, separate from and in addition to said color
former and sulfonamide developer, that absorbs electromagnetic radiation
and generates heat that causes selective combination of said color former
and sulfonamide developer.

The references set forth below are relied upon by the Examiner as
evidence of unpatentability:
Heneghan US 6,624,117 B1 Sep. 23, 2003
Tajiri US 6,680,281 B2 Jan. 20, 2004
Liang US 6,740,465 B2 May 25, 2004
Gore US 2004/0146812 A1 Jul. 29, 2004
Kasperchik US 2005/0089782 A1 Apr. 28, 2005
Tsukada US 6,890,881 B2 May 10, 2005
Taylor US 2005/0255998 A1 Nov. 17, 2005

Claims 1, 2, 4-10, 16-19, 21-25, and 36-41 are rejected under
35 U.S.C. § 102(b) as being anticipated by Liang.
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Application 11/180,410

Claims 1-10, 16-25, and 38-42 are rejected under 35 U.S.C. § 102(e)
as being anticipated by Tsukada.
Claims 1-19, 21-38, and 431 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Gore in view of Taylor, Tajiri, and Heneghan.
Claims 1-43 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kasperchik in view of Taylor, Tajiri, and Heneghan.

THE SECTION 102 REJECTIONS
The Examiner finds that the color forming compositions of both Liang
and Tsukada include ingredients which inherently would absorb
electromagnetic radiation and generate heat (Ans. 3-5, para. bridging 7-8).
When relying upon a theory of inherency, the Examiner must provide
a basis in fact and/or technical reasoning to reasonably support the
Examiner's determination that the allegedly inherent characteristic
necessarily flows from the teachings of the applied prior art. Ex parte Levy,
17 USPQ2d 1461, 1463-64 (BPAI 1990).
As correctly argued by Appellants (Reply Br. 2-3), the appealed
claims require a color forming composition which comprises "a radiation
absorber . . . that absorbs electromagnetic radiation and generates heat that
causes selective combination of said color former and sulfonamide

1 The Examiner has withdrawn this rejection as applied against claims 20
and 42 (Ans. 2). Also, as listed in the Answer (Ans. 5), this rejection is
erroneously applied against claims 39, 40, and 41 (i.e., since no such
rejection of these claims was made in the Final Office Action and since the
listed rejection of these claims in the Answer is not characterized as a new
ground of rejection). Accordingly, the above-noted rejection in this appeal
is applicable only against claims 1-19, 21-38, and 43.

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Application 11/180,410

developer" (claim 1). We agree with Appellants that the Examiner has
provided no basis in fact and/or technical reasoning to support a
determination that the compositions of Liang and Tsukada respectively
include ingredients which inherently would absorb electromagnetic radiation
and generate heat of such a magnitude as to cause "selective combination of
said color former and sulfonamide developer" (claim 1). Indeed, the
inherency position expressed by the Examiner does not even address
whether any inherently generated heat in the prior art compositions would be
of a magnitude sufficient to cause the selective combination of color former
and sulfonamide developer as required by the appealed claims.
Under these circumstances, we cannot sustain the § 102 rejections
based on Liang and Tsukada respectively.

THE SECTION 103 REJECTIONS
FINDINGS OF FACT

The Examiner finds that each of Gore and Kasperchik discloses a
composition of the type defined by claim 1 wherein a radiation absorber
absorbs electromagnetic radiation and generates heat to thereby cause
selective combination of a color former and developer (Ans. 5-7). The
Examiner additionally finds that Gore and Kasperchik generically disclose
developers but do not teach the specific sulfonamide developer required by
claim 1 (id.). In this latter regard, the Examiner finds that Taylor, Tajiri, and
Heneghan disclose color forming compositions containing a sulfonamide
developer which combines with a color former upon application of heat and
which provides a variety of advantages (id.). Significantly, none of these
findings has been disputed by Appellants in the record of this appeal.
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Based on these findings, the Examiner concludes that it would have
been obvious for one with ordinary skill in this art to provide the
compositions of Gore or Kasperchik with a developer of the sulfonamide
type in order to obtain the advantages associated therewith as taught by
Taylor, Tajiri, and Heneghan (Ans. 6, 7).

ISSUE
Have Appellants shown error in the Examiner's conclusion that it
would have been obvious to combine the applied prior art teachings in the
manner discussed above?

PRINCIPLES OF LAW
When the question is whether a claim for a combination of prior art
elements is obvious, "a court must ask whether the improvement is more
than the predictable use of prior art elements according to their established
functions." KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1740 (2007).
For obviousness under § 103, "the expectation of success need only be
reasonable, not absolute." Pfizer, Inc. v. Aptoex, Inc., 480 F.3d 1348, 1364
(Fed. Cir. 2001).
ANALYSIS
Appellants argue there is no reason in the prior art for combining the
secondary reference teachings with Gore and Kasperchik respectively (App.
Br. 9, 11). We disagree. As correctly explained by the Examiner (Ans. 8),
an artisan would have combined the applied prior art teachings in the
proposed manner in order to provide the compositions of Gore and
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Kasperchik with the known prior art advantages associated with sulfonamide
developers as taught by Taylor, Tajiri, and Heneghan.
Appellants also argue that the "secondary references do not teach or
suggest that the claimed sulfonamide developers would work in a
composition or method in which electromagnetic radiation, rather than, for
example, a thermal head, is used" (App. Br. 10; see also App. Br. 11, Reply
Br. 4-5). As a matter of clarification, in the appealed claims as well as in
Gore and Kasperchik, the reaction (i.e., combination) of color former and
developer is not directly caused by electromagnetic radiation; instead, the
reaction is caused by heat generated by a radiation absorber as a result of
absorbing the electromagnetic radiation. For this reason and because the
secondary references teach that sulfonamide developers react by application
of heat, an artisan would have reasonably expected success in combining the
sulfonamide developers of the secondary references with the heat-generating
radiation absorbers of Gore or Kasperchik. See Pfizer, 480 F.3d at 1364.
Finally, citing In re Ratti, 270 F.2d 810 (CCPA 1959), Appellants
argue that "making the modification to Gore proposed in the final Officer
[sic, Office] Action would completely change the principles on which the
Gore teachings operate" (App. Br. 11). This argument also is made with
respect to the Kasperchik reference (id.). However, Appellants have offered
no explanation at all in support of the assertion that the proposed
modification of Gore and Kasperchik "would completely change" (id.) the
principles on which these references operate. Based on the record before us,
we determine that Gore's and Kasperchik's principles of operation involve
using heat from a radiation absorber to cause reaction between a color
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former and a developer and that these operation principles would not be
changed by the proposed modification.

CONCLUSIONS OF LAW
For the above stated reasons, Appellants have failed to show that the
improvement represented by the appealed claims is more than the
predictable use of prior art elements according to their established functions.
KSR, 127 S. Ct. at 1740. On this record, the proposed combinations of
Gore's or Kasperchik's radiation absorbers with the sulfonamide developers
of the secondary references would predictably perform according to their
established functions. It follows that the Appellants have failed to show that
the Examiner erred in making the § 103 rejections under consideration.

ALL REJECTIONS

ORDER
The § 102 rejection of claims 1, 2, 4-10, 16-19, 21-25, and 36-41 as
being anticipated by Liang is reversed.
The § 102 rejection of claims 1-10, 16-25, and 38-42 as being
anticipated by Tsukada is reversed.
The § 103 rejection of claims 1-19, 21-38, and 43 as being
unpatentable over Gore in view of Taylor, Tajiri, and Heneghan is affirmed.
The § 103 rejection of claims 1-43 as being unpatentable over
Kasperchik in view of Taylor, Tajiri, and Heneghan is affirmed.
The decision of the Examiner rejecting the appealed claims is
affirmed.
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Application 11/180,410

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

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HEWLETT PACKARD COMPANY
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