Ex Parte Shibahashi et al

Board of Patent Appeals and Interferences

Feb 15, 2000

08208912 (B.P.A.I. Feb. 15, 2000)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not
written for publication in a law journal and (2) is not binding precedent of
the Board.
Paper No. 72
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte YUTAKA SHIBAHASHI, NORIKAZU NAKASUJI,
TSUTOMU KITO, MICHIYUKI YASUDA, KUNIYUKI SENGA
____________
Appeal No. 1998-1015
Application No. 08/208,912
____________
ON BRIEF
____________
Before KIMLIN, GARRIS, and BAHR, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 15, 5-9 and 11-13. Claims
16-18, the other claims remaining in the present application, stand withdrawn from
consideration. Claim 15 is illustrative:
15. A color memory toy comprising:
a toy having an outer surface which is painted with a paint
containing a quasi-reversible thermochromic coloring material or
with both a paint containing said quasi-reversible thermochromic
coloring material and a paint containing a temperature invariant
colored material,
Appeal No. 1998-1015
Application No. 08/208,912
2
wherein said quasi-reversible thermochromic coloring
material has a temperature hysteresis characteristic such that when
said coloring material is in a first colored state and the temperature
thereof is raised to a first temperature, the first colored state starts
to change to a second colored state, and completely becomes the
second colored state at a temperature range higher than TB, which
is higher than said first temperature, and said coloring material
remains in the second colored state at the temperature range
between said first temperature and a second temperature which is
lower than said first temperature, and when the coloring material
is in the second colored state and the temperature is lowered to the
second temperature, the second colored state starts to change to
the first colored state, and completely becomes the first colored
state at a temperature range lower than a temperature TA, which is
lower than said second temperature, and said coloring material
remains in the first colored state at the temperature range between
said second and first temperature, wherein the temperature TA is
within the range of about 0
C to about 15
C, the temperature of TB
is within the range of about 27
C to about 90
C, and the
temperature range between the second temperature and the first
temperature is within the range of about I0
C to about 35
C, and
wherein said quasi-reversible thermochromic coloring
material comprises:
(A) an electron-donating chromatic organic
compound selected from the group consisting of diaryl
phthalides, indolyl phthalides, polyaryl carbinols, leuco
auramines, acyl auramines, aryl auramines, Rhodamine B
lactams, indolines, spiropyrans and fluorans;
(B) a compound selected from the group consisting of
phenolic compounds having 6 to 49 carbon atoms, metal
salts of the phenolic compounds, aromatic carboxylic acids
having 7 to 12 carbon atoms, aliphatic carboxylic acids
having 2 to 5 carbon atoms, metal salts of carboxylic acids
Appeal No. 1998-1015
Application No. 08/208,912
3
having 2 to 22 carbon atoms, acidic phosphoric esters
having I to 44 carbon atoms, metal salts of the acidic
phosphoric esters and triazole compounds having 2 to 24
carbon atoms; and
(C) an ester compound;
said components (A), (B) and (C) being present in a
weight ratio in the range of 1:0.1 to 50:1 to 800 and
being in the form of a homogenous fused mixture,
and
said component (C) being selected from the following
compounds having a
T value measured as melting
point (
C) - clouding point (
C) in the range of from
5
C to less than 50
C: an alkyl ester, aryl ester and
cycloalkyl ester of an aromatic-carboxylic acid which
is unsubstituted or substituted by one or more
substituents in the aromatic ring, a branched alkyl
ester, aryl ester, arylalkyl ester, a cycloalkyl ester of
aliphatic carboxylic acid, an alkyl ester of alicyclic
carboxylic acid, a diester of dicarboxylic acid and a
glyceride.
The examiner relies upon the following references as evidence of obviousness:
Shibahashi et al. 4,425,161 Jan. 10, 1984
Kito et al. (Kito '565) 4,554,565 Nov. 19, 1985
Shimizu et al. (Shimizu) 4,560,604 Dec. 24, 1985
Kito et al. (Kito '301) 4,720,301 Jan. 19, 1988
Appellants' claimed invention is directed to a color memory toy which surface is
painted with a quasi-reversible thermochromic coloring material. According to page 5 of
appellants' specification, "the toy of the present invention is constructed such that one
of two visual configurations can be selected and held according to user's desire." We
Appeal No. 1998-1015
Application No. 08/208,912
4
are told that "[a] feature of the coloring material of the invention is that it exhibits a color
holding temperature within the range of 10-35
C. Thus, either of two colors can be held
at or near ambient temperature." (page 7 of brief).
The present application is a continuation of grandparent application U.S. Serial
No. 07/443, 872, filed November 30, 1989. An appeal was taken to this Board in the
grandparent application on claims which are essentially the same as those presently
before us. In a decision dated November 20, 1992, a merits panel of this Board
sustained the examiner's rejection of the appealed claims under 35 U.S.C. § 103 over
the same prior art now applied to instant independent claim 15.
Appellants submit at page 6 of the brief that "[c]laims 15, 5-9 and 11-13 stand or
fall together". Accordingly, all the appealed claims stand or fall together with
independent claim 15.
Appealed claims 15, 5-9, 11 and 13 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Shibahashi in view of Kito '301 and Kito '565. Claim 12 stands
rejected under 35 U.S.C. § 103 as being unpatentable over the stated combination of
references further in view of Shimizu.
We have thoroughly reviewed each of appellants' arguments for patentability, as
well as the declaration evidence relied on in support thereof. However, for the reasons
set forth by the examiner and articulated in the prior Board decision, we find that the
Appeal No. 1998-1015
Application No. 08/208,912
5
claimed subject matter would have been prima facie obvious to one of ordinary skill in
the art within the meaning of § 103. Also, we concur with the examiner that appellants'
declaration evidence does not outweigh the evidence of obviousness represented by
the cited prior art. Accordingly, we will sustain the examiner's rejections.
We agree with the examiner and the merits panel of the prior Board decision that
it would have been prima facie obvious for one of ordinary skill in the art to substitute
the quasi-reversible thermochromic coloring material of Kito '301 for the thermochromic
material of Shibahashi in making color memory toys. Appellants do not dispute that
Kito '301 specifically discloses the presently claimed quasi-reversible thermochromic
coloring materials. Indeed, appellants' specification states that "[t]he reversible
thermochromic recording composition proposed by the present inventor in U.S. patent
4,720,301 is preferably used as the above-mentioned quasi-reversible thermochromic
coloring." (page 3 of specification, paragraph 5). We are not persuaded by appellants'
argument that "Kito et al '301 discloses or suggests only a small number of
compositions which exhibit a two-color holding temperature range of 10-35
C." (page
12 of brief). Kito '301 expressly teaches that appellants' quasi-reversible
thermochromic coloring materials can be employed with a variety of articles (column 11,
lines 5-17), and it is well settled that it is a matter of obviousness for one of ordinary skill
in the art to select a particular component from among many disclosed by the prior art
Appeal No. 1998-1015
Application No. 08/208,912
6
as long as it is taught that the selection will result in the disclosed effect. Merck & Co.,
Inc. v. Biocraft Lab Inc. 874 F.2d 804, 807, 10 USPQ2d 1843, 1846 (Fed. Cir. 1989); In
re Corkill 771 F2d 1496, 1500, 226 USPQ 1005, 1008 (Fed. Cir. 1985).
Appellants rely upon the rule 132 declaration of Jim Wagner as evidence of
commercial success in order to rebut the prima facie case of obviousness.
Commercial success is but one evidentiary consideration that of itself is not
primarily determinative of nonobviousness. In re Rynkiewicz 390 F.2d 742, 746, 156
USPQ 462, 465, (CCPA 1968). In the present case, even assuming, for the sake of
argument, that appellants' declaration evidences commercial success, we do not find
that such evidence outweighs the substantial evidence of obviousness represented by
the applied prior art. Furthermore, we concur with the examiner's assessment of the
declaration that it falls short of establishing the commercial success of the myriad of
toys within the scope of the appealed claims. For instance, the appealed claims
embrace all quasi-reversible thermochromic coloring materials, whereas the declaration
is silent regarding the specific coloring materials used with the Color FX toys. Also,
while paragraph 3 of the declaration states the total sales of Color FX vehicles were
12.7 million dollars for 1993 and 1994, this information is of little probative value in the
absence of an adequate showing as to the reasons behind such sales. See Cable
Appeal No. 1998-1015
Application No. 08/208,912
7
Elec. Prod. Inc. v. Genmark, Inc., 770 F.2d 1015, 1026-27, 226 USPQ 881, 888 (Fed.
Cir. 1985). Hence, not only is the declaration evidence not commensurate in scope
with the degree of protection sought by the appealed claims, but it may very well be that
the commercial success enjoyed was, at least in part, due to the specific colors
marketed.
Also, the sales data of the declaration must be placed in perspective by evidence
demonstrating that the subject invention displaced prior art articles or surpassed the
volume sales of prior art articles or that appellants' market share increased significantly
after introduction of the claimed invention. Accordingly, the examiner's criticism is well
taken that the declaration provides no evidence of the relative sales and advertising
budgets between the Color FX series of toys and other similar toy vehicles which
employ reversible thermochromic coloring materials such as "Color Racers."
Manifestly, the sales data recorded in the declaration has little
meaning if not presented in comparison to the sales of similar toys which do not use the
claimed coloring material.
Furthermore, the declaration evidence is not commensurate in scope with the
subject matter encompassed by the appealed claims for the additional reason that the
appealed claims broadly embrace all color memory toys, while the declaration evidence
is limited to a specific toy vehicle.
Appeal No. 1998-1015
Application No. 08/208,912
8
Although, as noted above, all the appealed claims stand or fall together with
claim 15 as per appellants' statement at page 6 of the brief, appellants offer a separate
argument for appealed claim 12 at pages 20-23 of the brief. However, we are in full
agreement with the examiner that it would have been obvious for one of ordinary skill in
the art to use the claimed quasi-reversible thermochromic coloring materials on a toy
whose body is one of the recited plastics and whose outer surface is a non-woven one.
In conclusion, based on the foregoing, the examiner's decision rejecting the
appealed claims is affirmed.
No period for taking any subsequent action in connection with this appeal may
be extended under 37 CFR § 1.136(a).
AFFIRMED
EDWARD C. KIMLIN )
Appeal No. 1998-1015
Application No. 08/208,912
9
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
BRADLEY R. GARRIS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER BAHR )
Administrative Patent Judge )
vsh
Appeal No. 1998-1015
Application No. 08/208,912
10
SUGHRUE, MION, ZINN, MACPEAK & SEAS
2100 PENNSYLVANIA AVENUE, N.W.
WASHINGTON , DC 20037-3202