Ex Parte Gore et alDownload PDFBoard of Patent Appeals and InterferencesNov 3, 200811180410 (B.P.A.I. Nov. 3, 2008) Copy Citation 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 ____________ Decided: November 3, 2008 ____________ 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. 2 Appeal 2008-3516 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. 3 Appeal 2008-3516 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. 4 Appeal 2008-3516 Application 11/180,410 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 5 Appeal 2008-3516 Application 11/180,410 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 6 Appeal 2008-3516 Application 11/180,410 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. 7 Appeal 2008-3516 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 cam HEWLETT PACKARD COMPANY P O BOX 272400 3403 E. HARMONY ROAD INTELLECTUAL PROPERTY ADMIN. FORT COLLINS CO 80527-2400 8 Copy with citationCopy as parenthetical citation