Ex Parte Kivley

Board of Patent Appeals and Interferences

Jun 22, 2012

11541091 (B.P.A.I. Jun. 22, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/541,091 09/29/2006 Blane M. Kivley 05033.101 9870
41689 7590 06/22/2012
BRADLEY P. HEISLER
HEISLER & ASSOCIATES
3017 DOUGLAS BOULEVARD, SUITE 300
ROSEVILLE, CA 95661
EXAMINER
KHAN, TAHSEEN
ART UNIT PAPER NUMBER
1783
MAIL DATE DELIVERY MODE
06/22/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BLANE M. KIVLEY
____________

Appeal 2011-004085
Application 11/541,091
Technology Center 1700
____________

Before CATHERINE Q. TIMM, JEFFREY T. SMITH
and LINDA M. GAUDETTE, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-004085
Application 11/541,091

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1, 3 through 6, 9, 11, and 14 through 20. We have jurisdiction under
35 U.S.C. § 6.
Appellant’s invention is directed to a photomorphic building material
and the methods of making and using the photomorphic building material.
App. Br. 2, 4-5. Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. A photomorphic building material, comprising in
combination:
a rigid base material adapted to be installed within a
residential structure;
said base material being at least partially transparent;
said base material having at least one side adapted to be
oriented for viewing by individuals adjacent the residential
structure;
a photomorphic layer coupled to said base material;
said photomorphic layer on a side of said base material
opposite said at least one side adapted to be oriented for
viewing;
said photomorphic layer visible from said viewing side of
said base material, through said base material;
said photomorphic layer adapted to change in appearance
in response to changes in temperature experienced by said
photomorphic layer; and
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a protective layer adjacent said photomorphic layer and
on a side of said photomorphic layer opposite said base
material.
The Examiner relied on the following references in rejecting the
appealed subject matter:
Davis US 5,805,245 September 8, 1998
Byker US 6,446,402 B1 September 10, 2002
Eugene Low, Chi Tiles,
web.archive.org/web/20040923184309/http://www.designboom.com/contest
/view,php?contest_pk=2&item_pk=367&p=1 (last visited Oct. 16, 2009).

Ontario Tile Setters, “Quality Tile and Flooring”Gallery,
web.archive.org/web/20031107080017/ontariotile.com/joespics4.html (last
visited Nov. 12, 2009).

Elia Nedkov, Bath Scape,
web.archive.org/web/20040325201311/http://www.designboom.com/wc/86.
html (last visited Nov. 6, 2009).

Appellant, App. Br. 5-6, requests review of the following rejections
from the Examiner’s final office action:
I. Claims 1, 3-6, and 15-17 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Davis.
II. Claims 1, 14, and 16 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Byker.
III. Claims 9 and 11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Davis.
IV. Claims 18 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Davis and Chi Tiles.
V. Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Davis, Chi Tiles, and Ontario.
VI. Claims 18 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nedkov and Davis.
Appeal 2011-004085
Application 11/541,091

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OPINION
Rejection under 35 U.S.C. § 102(b) based on Davis
The dispositive issue on appeal for this rejection is: Did the Examiner
err in determining that Davis describes a photomorphic building material
having a base material being at least partially transparent as required by the
subject matter of independent claims 1 and 16? 1
After thorough review of the respective positions provided by
Appellant and the Examiner, we answer this question in the negative and
AFFIRM.
The Examiner found that Davis discloses a multilayered
thermochromic display system comprising a substrate base material, a
thermochromic (photomorphic) film layer adjacent the substrate and a non-
invasive barrier (protective) layer. Ans. 5. The Examiner also found that
Davis describes the substrate is normally solid and stable (rigid) and may be
glass (at least partially transparent). Id. The Examiner further found that
Davis describes the thermochromic (photomorphic) film layer as capable of
changing color in response to temperature changes. Id. The Examiner
concluded that Davis anticipates the subject matter of independent claim 1.
Id. at 6.

1 We note that Appellant relies on the same arguments to address the
patentability of both independent claims 1 and 16. App. Br. 6. For the
purposes of this decision, we limit our discussion to independent claim 1.
We also note that Appellant has not argued all of the dependent claims
separately. Accordingly, claims not argued separately will stand or fall
together with their respective independent claim. Claims argued separately
will be addressed separately.
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Appellant argues that Davis only teaches a base material that is not
transparent (App. Br. 9) and discloses a substrate that can be transparent
when merely acting as a barrier for a lower thermochromic film layer rather
than a base material (Id. at 7-8). Appellant further argues that Davis does
not teach a photomorphic layer visible from a viewing side of a base
material through the base material. Id. at 9.
To find anticipation, “[a] single reference must describe the claimed
invention with sufficient precision and detail to establish that the subject
matter existed in the prior art.” Verve, LLC v. Crane Cams, Inc., 311 F.3d
1116, 1120 (Fed. Cir. 2002). “[T]he reference must describe the applicant’s
claimed invention sufficiently to have placed a person of ordinary skill in the
field of the invention in possession of it.” In re Spada, 911 F.2d 705, 708
(Fed. Cir. 1990).
We agree with the Examiner that Davis describes an embodiment
(albeit nonpreferred) wherein the substrate is transparent. Ans. 13. We also
agree with the Examiner that Davis’ embodiment with the transparent
substrate will allow viewing through the substrate. Id. at 14. In this case,
we are persuaded by the Examiner’s reasoning (Id. at 5-6, 13-15) that Davis’
disclosure is adequate to put the skilled worker in possession of the claimed
invention.
Regarding claims 3 and 5, Appellant additionally argues that Davis
does not disclose interposing a separate image layer between the
photomorphic layer and the base material. App. Br. 11.
We are unpersuaded by Appellant’s argument and agree with the
Examiner that Davis’ multilayer structure comprises more than one
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thermochromic layer which can be arranged between the photomorphic layer
and the base material. Ans. 5, 15.
Accordingly, we sustain the Examiner’s rejection of claims 1, 3-6 and
15-17 under 35 U.S.C. § 102(b) as anticipated by Davis.

Rejection of Claims 9 and 11 under 35 U.S.C. § 103(a) over Davis
Claims 9 and 11 require an attachment layer is provided behind the
protective layer to bond the building material to a surface.
The Examiner found that Davis teaches that the disclosed
thermochromic display system may be adhered to a number of materials
using known methods of adhesion. Ans. 8; Davis, col. 4, ll. 11-16. The
Examiner then concluded it would have been obvious to one of ordinary
skill in the art to provide an attachment layer to Davis’s disclosed
thermochromic display system in view of Davis’ disclosure above. Ans. 8.
Appellant argues that Davis does not explicitly identify any
attachment layer as required by the subject matter of claim 9 but instead only
discloses that the substrate can be adhered to any number of backing
materials depending on the use of the displays. App. Br. 13. Appellant
further argues that Davis fails to provide a particular motivation for one
skilled in the art to arrange the attachment layer as claimed. Id. at 14.
We are unpersuaded by this argument and agree with the Examiner’s
reasoning that Davis provides guidance to one skilled in the art to provide an
attachment (adhesive) layer to bond the thermochromic display system as
required by the subject matter of claim 9. Ans. 15. A person of ordinary
skill in the art would have sufficient skill to select the appropriate
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attachment (adhesive) layer to bond the thermochromic display to an
installation surface
We note that the argument with respect to claim 11 concerning a
photomorphic layer visible from a viewing side of a base material through
the base material (App. Br. 15) has been addressed above and we refer
Appellant to our prior discussion on this issue.
Accordingly, we sustain the Examiner’s rejection of claims 9 and 11
under 35 U.S.C. § 103(a) as obvious over Davis.

Rejection of Claims 18-20 under 35 U.S.C. § 103(a)
over Davis, Chi Tiles and Ontario
Claims 18 and 19 are directed to a method of installing photomorphic
building materials to a surface and changing the appearance of the building
material by varying the environmental conditions. Claim 20 is directed to
providing the base material in the form of a water containing basin.
We refer to the Examiner’s Answer for a statement of the Examiner’s
rejections. Ans. 8-10.
With respect to claim 20, the Examiner further found that Davis and
Chi Tiles do not disclose a base material in the form of a water containing
basin. Id. at 10. The Examiner found that the additional reference to
Ontario taught a base material in the form of a water containing basin and
concluded that it would have been obvious to one of ordinary skill in the art
to use the thermochromic display system of Davis as tiles for a base material
in the form of a water containing basin in view of Chi Tiles’ disclosure. Id.
With respect to claims 18 and 19, in addition to the arguments
previously presented for Davis, Appellant argues that Chi Tiles does not
disclose any details of the thermochromic tiles disclosed, including
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indicating any transparency of any base material. App. Br. 16-17. With
respect to claim 20, Appellant argues that Ontario fails to teach an at least
partially transparent base material through which photomorphic layers are
viewed. Id. at 18.
We are unpersuaded and agree with the Examiner’s reasoning. Ans.
10, 16. Moreover, Appellant’s arguments for the rejections stated above do
not consider the Examiner’s reasoning for combining the prior art. See In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (the test for obviousness is what the
combined teachings of the references would have suggested to one of
ordinary skill in the art). For example, the Examiner noted, and we agree,
that Chi Tiles provides the guidance to one skilled in the art to use
thermochromic tiles for walls that change color due to temperature changes.
Ans. 16. The Examiner clearly states that the claimed invention would have
been obvious to one skilled in the art in light of the combination of Davis
and Chi Tiles. Id. Appellant’s arguments improperly focus on the
individual teachings of Davis, Chi Tiles and Ontario instead of addressing
the Examiner’s respective stated case for obviousness (App. Br. 16-17).
“[O]ne cannot show non-obviousness by attacking references individually
where . . . the rejections are based on combinations of references.” In re
Keller, 642 F.2d at 426. Appellant has not adequately explained why one
skilled in the art would not have found it obvious to use the thermochromic
display system of Davis as taught by Chi Tiles.
Accordingly, we sustain the Examiner’s rejections of claims 18 and
19 under 35 U.S.C. § 103(a) as obvious over Davis and Chi Tiles and of
claim 20 under 35 U.S.C. § 103(a) as obvious over Davis, Chi Tiles, and
Ontario.
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Application 11/541,091

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Rejection of Claims 18 and 20 under 35 U.S.C. § 103(a)
over Nedkov and Davis
We refer to the Examiner’s Answer for a statement of the Examiner’s
rejection of claims 18 and 20. Ans. 11-12.
Appellant argues that Davis and Nedkov fail to teach a transparent
base material. App. Br. 17. Appellant further argues that Nedkov only
teaches thermochromatic paint applied as a finish on the bathtub. Id.
We are unpersuaded and agree with the Examiner’s reasoning. Ans.
11-12. We direct Appellant’s attention to our discussion on Davis above
concerning the transparent base material. We again note that Appellant’s
arguments do not consider the Examiner’s reasoning for combining the prior
art. See Keller, 642 F.2d at 425.
Accordingly, we also sustain the Examiner’s rejections of claims 18
and 20 under 35 U.S.C. § 103(a) as obvious over Nedkov and Davis.
Rejection under 35 U.S.C. § 102(b) based on Byker2
After thorough review of the respective positions provided by
Appellant and the Examiner, we AFFIRM for the reasons presented by the
Examiner and add the following for emphasis.
We refer to the Examiner’s Answer for a statement of the Examiner’s
rejection. Ans. 6-7.
Appellant argues that Byker discloses a window and not a building
material having a particular appearance for particular viewing. App. Br. 12.

2 We note that Appellant relies on the same arguments to address the
patentability of both independent claims 1 and 16. App. Br. 12. We limit
our discussion to independent claim 1. We also note that Appellant has not
argued dependent claim 14 separately. Accordingly, dependent claim 14
will stand or fall together with independent claim 1.
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Appellant further argues that Byker does not teach a visible photomorphic
layer as required by the subject matter of claim 1. Id.
We are unpersuaded by Appellant’s argument and agree with the
Examiner’s reasoning that Byker’s multilayer window structure is to be
installed in a building. Ans. 7. Moreover, Appellant has not disputed that
Davis’ multilayer window structure meets the claimed multilayer structure
required by the subject matter of claim 1. While Appellant argues that the
Byker window is not viewed as required by claim 1 because it does not
support a visible image (App. Br. 12-13), we agree with the Examiner’s
reasoning that the thermochromic layer is viewable through the substrate of
Byker’s window (Ans. 7). We also note that note that claim 1 does not
require an image layer.
Accordingly, we sustain the Examiner’s rejection of claims 1, 14 and
16 under 35 U.S.C. § 102(b) as anticipated by Byker.

ORDER
The rejection of claims 1, 3-6, and 15-17 under 35 U.S.C. § 102(b) as
anticipated by Davis is affirmed.
The rejection of claims 1, 14, and 16 under 35 U.S.C. § 102(b) as
anticipated by Byker is affirmed.
The rejection of claims 9 and 11 under 35 U.S.C. § 103(a) as
unpatentable over Davis is affirmed.
The rejection of claims 18 and 19 under 35 U.S.C. § 103(a) as
unpatentable over Davis and Chi Tiles is affirmed.
The rejection of claim 20 under 35 U.S.C. § 103(a) as unpatentable
over Davis, Chi Tiles, and Ontario is affirmed.
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Application 11/541,091

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The rejection of claims 18 and 20 under 35 U.S.C. § 103(a) as
unpatentable over Nedkov and Davis is affirmed.

TIME PERIOD
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).

AFFIRMED

bar/sld