Ex Parte Parr

Board of Patent Appeals and Interferences

Apr 21, 2011

11376560 (B.P.A.I. Apr. 21, 2011)

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.
11/376,560 03/16/2006 Wayne Parr 2961-40 2335
23117 7590 04/21/2011
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
CAMERON, ERMA C
ART UNIT PAPER NUMBER
1715
MAIL DATE DELIVERY MODE
04/21/2011 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 WAYNE PARR
____________

Appeal 2010-003219
Application 11/376,560
Technology Center 1700
____________

Before BRADLEY R. GARRIS, BEVERLY A. FRANKLIN, and
MARK NAGUMO, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 14-28, 31, 32, 34, 36, 38, 40-43, and 45. We have
jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Appellant claims a method of manufacturing a thermochromatic
pigment covered article comprising: mixing an encapsulated
thermochromatic pigment with a first resin to form a pigment mixture;
mixing additional resin with the pigment mixture; and applying the
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combined pigment mixture and resin to an article by spraying, a waterfall
method or dipping (claim 14).
Further details regarding this claim subject matter are set forth in
representative claim 14 which reads as follows:
14. A method of manufacturing a thermochromatic pigment covered
article, comprising:
mixing an encapsulated thermochromatic pigment with a wetting or
dispersion agent and a first resin to form a pigment mixture;
mixing with said pigment mixture, additional resin that may be the
same as or a mixture including said first resin, or a different resin, so that the
thermochromatic pigment is dispersed therein and protected and to prevent
the thermochromatic pigment from separating from the resin and to keep it
dispersed therein; and
applying said combined pigment mixture and resin to an article in a
single layer by spraying, a waterfall method or dipping.
The references set forth below are relied upon by the Examiner as
evidence of obviousness:
Maruyama 6,313,067 B1 Nov. 6, 2001
Senga ‘765 6,669,765 B2 Dec. 30, 2003
Senga ‘168 6,946,168 B2 Sep. 20, 2005
The Examiner rejects claim 14 under the 1st paragraph of 35 U.S.C.
§ 112 for failing to comply with the written description requirement.
Under 35 U.S.C. § 103(a), the Examiner rejects:
claims 14-18, 21, 23-26, 28, 31, 42, 43, and 45 as unpatentable over
Maruyama;
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claims 14-16, 18-28, 31, 32, 34, 36, 38, 40-42, and 45 as unpatentable
over Senga ‘765; and
claims 14-16, 18-23, 26-28, 31, 32, 34, 36, 40-42, and 45 as
unpatentable over Senga ‘168.
The § 112, 1st paragraph, Rejection
The Examiner considers the claim 14 feature "or a different resin" to
violate the written description requirement because "[t]he examiner cannot
find where in the specification as originally filed it is stated that the
additional resin may be a different resin" (Ans. 3).
Appellant argues that the Examiner's rejection is improper for the
following reasons.
The specification as originally filed states on page 6,
paragraph [0025] that the resin added to the pigment and
wetting or dispersion agent mixture can be comprised of any
single or combination of polyesters, acrylics, alkyds, or epoxy
resin. Also, the specification as originally filed states at pages 6
and 7, paragraph [0028] that the resin in the resin-based mixture
can be comprised of any single or combination of polyesters,
acrylics, alkyds or epoxy resin. There is absolutely nothing in
the specification that states that the resin added to the pigment
and wetting or dispersion agent mixture (paragraph [0025] must
be the same as the resin in the resin-based mixture (paragraph
[0028]). Accordingly, the recitation in Claim 14 that the
additional resin may be the same as or a mixture including the
first resin or a different resin clearly does not involve new
matter.

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The test for compliance with the written description requirement is
whether the original application disclosure reasonably conveys to those
skilled in the art that the inventor had possession of the claimed subject
matter as of the application filing date. Ariad Pharms., Inc., v. Eli Lilly and
Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).
We agree with Appellant that paragraphs [0025] and [0028] of the
Specification would reasonably convey to those skilled in the art that
Appellant had possession of the embodiments defined by claim 14 wherein
the claimed additional resin may be the same as or different from the
claimed first resin. This is because the original disclosure in these
paragraphs is generic to the additional resin being either the same as or
different from the first resin. Particularly since this generic disclosure
includes only two embodiments, those skilled in the art would reasonably
understand that Appellant had possession of both embodiments as of the
application filing date.
For the above reasons, the embodiment defined by the claim 14
feature "or a different resin" does not violate the written description
requirement. It follows that we will not sustain the Examiner's § 112, 1st
paragraph, rejection of claim 14.
The § 103 Rejections
As an initial matter, we observe that Appellant presents no separate
argument of any reasonable specificity concerning the dependent claims
under rejection (App. Br. 18, 20, 22). Accordingly, the dependent claims
will stand or fall with their parent independent claims.
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The Examiner finds that each of the applied references to Maruyama,
Senga ‘765, and Senga ‘168 discloses a method which corresponds to the
method defined by independent claims 14 and 31 except for the claim step of
mixing additional resin with the pigment mixture, that is, the mixture of
pigment and first resin (Ans. 4-6). Based on the undisputed fact that
Appellant's claimed additional resin may be the same as the claimed first
resin, it is the Examiner's fundamental position that creating the pigment
mixture of the applied references by mixing in additional amounts of the
resin would have been obvious (id.).
Appellant contests the § 103 rejections with the arguments which
follow.1
Appellant acknowledges that each of Maruyama, Senga ‘765, and
Senga ‘168 discloses applying a pigment and resin mixture by printing but
argues that, contrary to the Examiner's above finding, there is no disclosure
in these references of applying the mixture by spraying, a waterfall method
or dipping as recited in the independent claims (App. Br. 16, 18, ¶ bridging
20-21).

1 Appellant states that the arguments are "supported by the Declaration of
Wayne Parr submitted with the Amendment dated October 31, 2008" (App.
Br. ¶ bridging 16-17; see also id. at 19, 21, Reply Br. 2). However, the
Evidence Appendix of the Appeal Brief does not contain a copy of this
Declaration as required by 37 C.F.R. § 41.37 (c)(1)(ix). Accordingly, we
will not consider the Declaration in assessing the propriety of the § 103
rejections before us. We emphasize that our declination to consider the
Declaration has little, if any, impact on whether the arguments are
persuasive since Appellant relies on the Declaration only as stating the
assertions made in these arguments to (id.).
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This argument is unpersuasive for two reasons. First, the argument
fails to address the Examiner's express finding that the printing performed in
these references would include spraying as claimed by Appellant (Ans. 6-8).
Second, the argument fails to address the Examiner's express finding that
Senga ‘168 "clearly teaches spray and dip coating (8:50-59)" (id. at 8) (spray
coating at col. 8, l. 57, dip coating at col. 8, ll. 57-58). In light of these
failures, Appellant's argument does not reveal any error in the findings under
review.
Appellant disputes the Examiner's obviousness conclusion regarding
the claimed step of mixing additional resin with the pigment mixture (App.
Br. 16-22; Reply Br. 2-3). Appellant explains that the purpose of this step is
to prevent separation of the pigment from the resin and to insure that the
combined pigment and resin can be applied to an article without requiring a
second coat (id.).
We cannot agree with Appellant's nonobviousness position.
As indicated previously, Appellant does not contest the Examiner's
point that each of the two claimed mixing steps may involve the same resin.
As a consequence, these claim steps are satisfied when the resin of the
applied references is mixed incrementally in stages with pigment. That is,
when the prior art resin is added and mixed into the pigment incrementally,
rather than all at once, the initial mixing of the prior art resin would satisfy
the first claimed mixing step while subsequent addition and mixing of this
same resin would satisfy the second claimed mixing step.
We conclude that it would have been obvious for an artisan to add and
mix the resin into the pigment of the applied references incrementally so as
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to insure effective and controlled blending of resin with pigment. The
resulting method would satisfy both of the mixing steps claimed by
Appellant. Even if the resin were added to pigment all at once, it would be
unrealistic to expect all of the added resin to mix simultaneously with
pigment. On the other hand, it is realistic to expect first portions of the resin
to mix with the pigment and form a pigment mixture, whereby the last
portions of the resin that mix are “additional resin” that is mixed with the
first-formed pigment mixture. Therefore, a mixing process in which the
resin is added all at once also would satisfy the claim steps under
consideration except in the unrealistic event that all the mixing were to occur
instantaneously.
A nonobviousness conclusion is not supported by Appellant's
explanation that the claimed mixing steps avoid separation of pigment from
resin and the need to apply multiple coatings. As correctly indicated by the
Examiner, the applied references contain no teaching of pigment separating
from resin (Ans. 6-8). Similarly, Appellant does not even assert that the
references teach their pigment and resin combinations must be applied in
multiple coatings. These circumstances reinforce our above determination
that Appellant's claimed mixing steps do not patentably distinguish over the
applied references.
For the above stated reasons, we sustain each of the Examiner's § 103
rejections.
Conclusion
The decision of the Examiner is affirmed.
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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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