Ex Parte Mehta et al

Patent Trial and Appeal Board

Mar 31, 2017

12917865 (P.T.A.B. Mar. 31, 2017)

United States Patent and Trademark Office
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.
12/917,865 11/02/2010 Rajendra Mehta 3729.181US01 2334
24113 7590 03/31/2017
PATTERSON THUENTE PEDERSEN, P.A.
80 SOUTH 8TH STREET
4800 IDS CENTER
MINNEAPOLIS, MN 55402-2100
EXAMINER
LEWIS, JUSTIN V
ART UNIT PAPER NUMBER
3725
MAIL DATE DELIVERY MODE
03/31/2017 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 PATENT TRIAL AND APPEAL BOARD
Ex parte RAJENDRA MEHTA and RICHARD L. SHIELDS
Appeal 2015-005721
Application 12/917,865
Technology Center 3700
Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Rajendra Mehta and Richard L. Shields (Appellants) appeal under 35
U.S.C. § 134(a) from the Examiner’s decision to reject claims 1—41 under 35
U.S.C. § 103(a) as unpatentable over Schmitz (US 7,316,422 Bl; iss. Jan. 8,
2008) and Nakasuji (US 4,028,118; iss. June 7, 1977). We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2015-005721
Application 12/917,865
CLAIMED SUBJECT MATTER
The claimed subject matter relates to “thermochromic coatings and
inks” for documents. Spec. 13, Fig. 1. Claims 1,15, and 29 are
independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A document, comprising:
a substrate; and
a coating disposed as a uniform layer on an area of said
substrate, said coating including a first thermochromic material
that appears as a first color when it is below a first temperature
and that appears substantially transparent when it is above said
first temperature, said coating including a second thermochromic
material that appears as a second color when it is below a second
temperature and that appears substantially transparent when it is
above said second temperature, said second temperature being
higher than said first temperature, whereby said coating disposed
on said area of said substrate appears as a third color which is a
mixture of said first and second colors when said coating is at a
temperature that is less than said first temperature, said coating
disposed on said area of said substrate appears as said second
color when said coating is at a temperature that is less than said
second temperature and greater than said first temperature, and
said coating disposed on said area of said substrate appears as the
color of said substrate when said coating is at a temperature that
is greater than said second temperature.
ANALYSIS
Independent claim 1 is directed to a coating including “a first color”
and “a second color,” wherein the coating “appears as a third color which is
a mixture of said first and second colors when said coating is at a
temperature that is less than said first temperature.” Appeal Br. 18, Claims
App. The Examiner finds Schmitz discloses the document of claim 1
except, inter alia, the above-cited limitation. See Final Act. 2—6; see also
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Appeal 2015-005721
Application 12/917,865
Ans 2—6. The Examiner finds that Nakasuji discloses that “one or more
individual colored components may be mixed in order to yield a resultant
thermochromic material as desired.” Ans. 20 (citing Nakasuji 2:26—28); see
also Final Act. 21 (citing Nakasuji 11:16—20).
Appellants contend that Nakasuji “teaches, at most, a thermochromic
sheet partially coated with three distinct thermochromic layers.” Appeal Br.
11 (emphasis omitted). Specifically, Appellants contend that in Nakasuji,
“thermochromic layer 1 changes from green to yellow; thermochromic layer
1 ’ changes from red to colorless; and thermochromic layer 1” changes from
blue to white. There are no areas in which several thermochromic materials
are mixed to produce yet another color.” Id. at 12. Appellants further
contend that
each of the 55 examples (Examples 30-84) of [Nakasuji] which
disclose utilization of thermochromic material teaches a single
thermochromic material with a single color change. Nowhere in
the 55 disclosed examples is there any suggestion of mixing
multiple thermochromic materials so that these materials provide
a color to the coating that is not the color of any of the individual
thermochromic materials.
Id. at 13.
Column 2 lines 26 to 34 of Nakasuji merely discloses that the
thermochromic material includes one or more (1) electron-donating
chromatic organic compounds, (2) compounds having a phenolic hydroxyl
group, and (3) compounds selected from the group consisting of higher
aliphatic monovalent alcohols; and a compound selected from the group
consisting of higher aliphatic monovalent acid alcohol esters. Further,
column 2 lines 35 to 37 of Nakasuji merely discloses that (1) the one or
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Appeal 2015-005721
Application 12/917,865
more compounds selected from the group consisting of higher aliphatic
monovalent alcohols “affects the temperature of coloration/
decoloration,” and (2) the compound selected from the group consisting of
higher aliphatic monovalent acid alcohol esters “affects the sharpness and
the temperature of coloration/decoloration.” There is no discussion in
column 2 lines 26 to 37 of Nakasuji of “one or more individual colored
components [being] mixed in order to yield a resultant thermochromic
material as desired,” as suggested by the Examiner. See Ans. 20.
Additionally, we agree with Appellants that (1) column 11 lines 16 to
20 of Nakasuji “provides blending a basic thermochromic or
microencapsulated thermochromic material with one of a multitude of
nonthermochromic material (polyethylene, polyvinylidene, chloride,
ionomers, and the like),” (2) “[t]his combination will merely produce a
polymer film having the thermochromic properties of the single basic
thermochromic or microencapsulated thermochromic material blended
therein,” and (3) “[t]here is no indication of mixing of multiple
thermochromic materials.” Appeal Br. 13. We further agree with
Appellants that “transition from one color to another color is distinct from
formation of a third color which is a mixture of a first color and a second
color.” Reply Br. 2; see also Ans. 21; Nakasuji 18:10—16. As such, based
on the foregoing reasons, the Examiner fails to establish by a preponderance
of the evidence that the combined teachings of Schmitz and Nakasuji
disclose the document of claim 1.
Each of independent claims 15 and 29 are directed to a document
including language similar to that for claim 1. See Appeal Br. 19-20, 21—22,
Claims App. The Examiner relies on similar unsupported findings and
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Appeal 2015-005721
Application 12/917,865
conclusions for claims 15 and 29 as those discussed above for claim 1. See
Final Act. 9-11, 14—16; see also Ans. 10-11, 15—16. Thus, the Examiner’s
findings and conclusions with respect to Schmitz and Nakasuji are deficient
for claims 15 and 29 as well.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner’s rejection of claims 1—41 as unpatentable over Schmitz and
Nakasuji.
DECISION
We REVERSE the decision of the Examiner to reject claims 1—41 as
unpatentable over Schmitz and Nakasuji.
REVERSED
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