Ex Parte Lungu

Board of Patent Appeals and Interferences

Apr 16, 2010

09839803 (B.P.A.I. Apr. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ADRIAN LUNGU
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Appeal 2009-010185
Application 09/839,803
Technology Center 1700
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Decided: April 16, 2010
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Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

REQUEST FOR REHEARING
Appellant, pursuant to 37 C.F.R. § 41.52, has submitted a timely
Request for Rehearing dated February 25, 2010 (hereafter the “Request”),
limited to requesting rehearing our affirmance of claim 33 of the original
Decision in this appeal dated December 24, 2009 (hereafter “Dec.”).
In that original Decision dated December 24, 2009, the decision of the
Examiner rejecting claims 1, 3-19, and 31-33 under 35 U.S.C. § 103 was
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Application 09/839,803

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affirmed.1 This affirmance was based on our agreement with the Examiner’s
determination that using an onium salt “in a greater reactive amount than the
leuco dye” as recited in claim 1 was obvious in light of the prior art (see
generally, Dec.).
Specifically, Appellant argues that we overlooked and did not
properly respond to appealed claim 33 (Request 1). To the contrary, we
pointed out that claim 33 was not argued separately from the other claims as
required by 37 C.F.R. § 41.37(c)(1)(vii). (Dec. 2). As stated in 37 C.F.R.
§ 41.37(c)(1)(vii), “A statement which merely points out what a claim
recites will not be considered an argument for separate patentability of the
claim.”
Appellant’s reliance on the statement in the Appeal Brief that “[f]or
the reasons stated above” (Br. 5, emphasis added), coupled with restating
the color contrast characteristic claim limitation of claim 33, as evidence that
we overlooked claim 33 is not well taken (Request 1; Br. 5). “[T]he reasons
stated above” were drawn to Appellant’s arguments with respect to the non-
obviousness of using an onium salt “in a greater reactive amount than the

1 Appellant points out that the Board conclusion sustaining the Examiner’s
§ 103 rejection of claims 1-8 indicates that we did not address claim 33
(Request 2). However, we note that we inadvertently did not include the
proper claim group only in the “Conclusion” section of our decision (e.g.,
compare Dec. 1 to Dec. 8). Accordingly, we amend our decision to correct
this typographical error. Thus, we affirm the Examiner’s rejection of claims
1, 3-19, and 31-33 under 35 U.S.C. § 103 (emphasis added). The error was
harmless as we had reviewed and considered the correct rejection in making
our determination.

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Application 09/839,803

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leuco dye” as recited in claim 1. Accordingly, this statement is insufficient
as an argument for separate patentability.
Moreover, Appellant failed to specifically point out the error in the
Examiner's rejection with respect to claim 33. Indeed, Appellant argued that
the color contrast characteristic recited in claim 33 is obtained as a result of
using the onium salt in an amount greater than the leuco dye (Br. 4, 5). We
also stated in our Decision at footnote 2 on page 6:
Although independent claim 33 is not separately argued,
we note that claim 33 does not require any relative amounts of
the onium salt versus the leuco dye, and encompasses an
intermediate product as well as a final product.

For all the reasons set forth in our Decision, we agree with the
Examiner’s reasonable conclusion that all of the claims are obvious under 35
U.S.C. § 103.
CONCLUSION
For the foregoing reasons, Appellant has not persuaded us that our
decision was in error. We do however modify the “Conclusion” section of
our Decision at page 9 to reflect the correct claim grouping, that is, all of the
claims 1, 3-19, and 31-33, as affirmed in the sole ground of rejection on
appeal.
Appellant’s request for rehearing with respect to the § 103 rejection of
claim 33 has been granted to the extent that our decision has been
reconsidered, but such request is denied with respect to making any
modifications to the decision.
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).

Appeal 2009-010185
Application 09/839,803

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DENIED

PL Initial:
sld

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