Ex Parte Shibahashi et al

Patent Trial and Appeal Board

Nov 19, 2012

10694006 (P.T.A.B. Nov. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte YUTAKA SHIBAHASHI, MICHIYUKI YASUDA, and
MASAHIRO IRIE
____________________

Appeal 2010-010723
Application 10/694,006
Technology Center 3700
____________________

Before: LINDA E. HORNER, SCOTT E. KAMHOLZ, and
MITCHELL G. WEATHERLY, Administrative Patent Judges.

KAMHOLZ, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-010723
Application 10/694,006

2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from the decision of the
Examiner to reject claims 1, 3-8, 15, and 16. Claims 9-14 have been
withdrawn. Claim 2 has been canceled. We have jurisdiction under 35
U.S.C. § 6(b).
We reverse.

THE CLAIMED SUBJECT MATTER
The claimed subject matter is directed to a toy that can be changed
between a coloring state and a decolorizing state, and related methods.
Spec. 1. Claim 3, reproduced below, is illustrative of the claimed subject
matter:
3. An alternately color-memorizing photochromic toy
comprising:
a toy element comprising a photochromic layer which
contains a diaryl ethene photochromic compound, maintains a
coloring state by developing a color through the irradiation of
ultraviolet rays or sunlight containing ultraviolet rays and
changes into decolorizing state through its decolorization by the
irradiation of visible light; and
a color-changing means which contains at least one of an
ultraviolet ray absorbent and a light-shading pigment capable of
shading at least ultraviolet rays, changes said photochromic
compound of the coloring state into decolorizing state by
cutting off ultraviolet rays of sunlight and thereby effecting
irradiation of visible light, and maintains the changed state,
wherein the coloring state is visible in well-lighted areas,
and
wherein a function to memorize and maintain coloring
and decolorizing states alternately is expressed by arranging
said color-changing means under such a condition that it is
contacted or non-contacted with said photochromic layer.
Appeal 2010-010723
Application 10/694,006

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Gordon
Reid
Kamada
Mullis
US 2,460,221
US 4,503,177
US 5,208,132
US 5,436,115
Jan. 25, 1949
Mar. 5, 1985
May 4, 1993
Jul. 25, 1995
Tomonaga US 2002/0114956 A1 Aug. 22, 2002

REJECTIONS
Appellants seek our review of the following rejections:
Claims 1, 3, 6, 7, 15, and 16 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Reid, Mullis, Gordon, and Tomonaga. Ans. 3.
Claims 4 and 5 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Reid, Mullis, Gordon, Tomonaga, and Kamada. Ans. 5.
Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Reid, Mullis, Gordon and Tomonaga. Ans. 6.

ANALYSIS
We focus our analysis on claim 3. The Examiner found that Reid
discloses all elements of claim 3 except fashioning the photochromic
element as a toy, the color-changing means, and the use of a diaryl ethene as
the photochromic compound. Ans. 3. The Examiner found that Mullis,
Gordon, and Tomonaga, respectively, disclose those limitations, and
articulated why it would have been obvious to combine these references with
Reid to reach the claimed subject matter. Ans. 3-5. In particular, the
Examiner found that Gordon’s sheet 25 satisfies the recited “color-changing
means” in part because it “caus[es] irradiation of visible light” upon light
Appeal 2010-010723
Application 10/694,006

4
sensitive member 12-13 when the sheet contacts the light-sensitive member.
Ans. 4.
The Examiner’s rejection is premised on an erroneous finding of fact
concerning Gordon. While Gordon’s sheet 25 does “contain[] at least one of
an ultraviolet ray absorbent and a light-shading pigment capable of shading
at least ultraviolet rays” as required by claim 3, such absorbent/shading
pigment simultaneously absorbs/shades visible light, as Gordon expressly
discloses: “sheet 25… [is] colored or pigmented or dyed red or amber to
degree sufficient… to substantially exclude visible and higher frequencies of
light above the infra-red,” (col. 2, l. 55 to col. 3, l. 2, emphasis added). Thus
Gordon’s sheet 25 blocks both ultraviolet and visible light from passing
through to the light-sensitive member when closed against it. Gordon’s
sheet 25 therefore cannot be said to “effect[] irradiation of visible light” as
required by claim 3.
We cannot sustain the Examiner’s rejection of claim 3, because it is
formed at least in part on the basis of the erroneous finding of fact identified
above. The rejections of all other claims fail for the same reason.

DECISION
For the above reasons, the Examiner’s decision to reject claims 1, 3-8,
15, and 16 is REVERSED.

REVERSED

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