Ex Parte Takasu

Patent Trial and Appeal Board

Mar 14, 2013

10840620 (P.T.A.B. Mar. 14, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte YOUICHI TAKASU
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Appeal 2011-006330
Application 10/840,620
Technology Center 3700
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Before STEFAN STAICOVICI, HYUN J. JUNG, and
NEIL T. POWELL, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/840,620

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STATEMENT OF THE CASE
Youichi Takasu (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision finally rejecting claims 1-7. Appellant’s representative
presented oral argument on March 7, 2013. We have jurisdiction over this
appeal under 35 U.S.C. § 6(b).

INVENTION
Appellant’s invention relates to a water-based ballpoint pen including
a tip 2, a ball 3, an ink container 6 having therein ink 61 and ink follower 62,
a tail stopper 7, and a clip 83. Spec. 6-7 and figs. 1 and 2.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A water-based ballpoint pen comprising:
an aqueous ink;
a ball;
a ballpoint pen tip for holding said ball at a front end thereof
and for discharging said ink from said top end portion;
an ink follower following said ink with consumption of said
ink; and
an ink container directly containing said ink and said ink
follower and for supplying said ink to said tip, said ink container
communicating with a rear portion of said tip,
wherein the ink is a non-shear-thinning aqueous ink having a
viscosity of from 1 to 50 mPa·s, measured with an B-type rotary
viscometer at 20°C, and
wherein the ink follower comprises at least a base oil and a
thickener and satisfies that the point (ω) at which its tanδ in
viscoelasticity determination exceeds than 1 falls within a range of 20
rad/s ≤ ω ≤ 450 rad/s.

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REJECTIONS
The following rejections are before us for review:
The Examiner rejected claims 1-7 under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description requirement.
The Examiner rejected claims 1, 2, and 4 under 35 U.S.C. § 103(a) as
unpatentable over Loftin (US 5,362,167, iss. Nov. 8, 1994) and Case (US
4,671,691, iss. Jun. 9, 1987).
The Examiner rejected claims 3 and 5-7 under 35 U.S.C. § 103(a) as
unpatentable over Loftin, Case, and Yoshii (US 6,305,865 B1, iss. Oct. 23,
2001).

SUMMARY OF DECISION
We REVERSE.

ANALYSIS
The Written Description Rejection
The Examiner found that the limitation in independent claim 1,
namely, “the point (ω) at which its tanδ in viscoelasticity determination
exceeds than 1 falls within a range of 20 rad/s ≤ ω ≤ 450 rad/s,” is not
supported by Appellant’s original disclosure.1 Ans. 3; see also App. Br.,
Claims App’x (emphasis added). According to the Examiner, “there is a
reasonable doubt as to the possession of the claimed limitation at the time of
[filing] because there have been several attempts to change the claim with
various expressions other than ‘over 1’ during the prosecution history.”
Ans. 7.

1 Appellant concedes that claim 1 contains a typographical error and
that the term “than” should be deleted. Reply Br. 4.
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It is well settled that the fundamental factual inquiry is whether the
specification conveys with reasonable clarity to those skilled in the art that,
as of the filing date sought, applicant was in possession of the invention as
now claimed. See, e.g., Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64
(Fed. Cir. 1991). In this case, although we appreciate the Examiner’s
position regarding Appellant’s multiple attempts to change the phrase “over
1,” nonetheless, we do not agree that such attempts amount to “a reasonable
doubt as to the possession of the claimed limitation at the time of [filing],”
as the Examiner proposes. Appellant’s Specification states that the “ink
follower is specifically so constituted that the point (ω) at which its tanδ is
over 1 falls within a range of 20 rad/s ≤ ω ≤ 450 rad/s.” Spec. 19.
Emphasis added. We agree with Appellant “that the term ‘exceeds,’ as used
in the present claims, is to be given its plain meaning, i.e., ‘to go beyond,’ as
defined by the Merriam-Webster Online Dictionary2.” App. Br. 8. We
further note that an ordinary and customary meaning of the term “over” is
“so as to exceed or surpass.” MERRIAM WEBSTER’S COLLEGIATE
DICTIONARY (10th Ed. 1997). Thus, in a first instance, the phrase “the point
(ω) at which its tanδ is over 1” (emphasis added) means the point (ω) at
which its tanδ exceeds 1. Furthermore, Appellant’s Specification describes
the viscoelasticity of the ink as “highly elastic and [] poorly viscous” when
tanδ < 1 and “poorly elastic and [] highly viscous” when tanδ >1. Spec. 18.
Thus, the viscoelastic behavior of the ink follower changes between highly
elastic/poorly viscous to poorly elastic/highly viscous when tanδ changes

2 An ordinary and customary meaning of the term “exceed” is “to go
beyond a limit set by.” MERRIAM WEBSTER’S COLLEGIATE DICTIONARY
(10th Ed. 1997).

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from a value below 1 to a value above 1, that is, when tanδ exceeds (i.e.,
goes beyond) 1.
For the foregoing reasons, we conclude that Appellant’s Specification
reasonably conveys to those skilled in the art that Appellant had possession
of the subject matter of claims 1-7 as of the filing date of the present
application. Therefore, we shall not sustain the rejection of claims 1-7 under
35 U.S.C. § 112, first paragraph, for failing to comply with the written
description requirement.

The obviousness rejection based upon Loftin and Case
The Examiner found that Loftin discloses all the limitations of
independent claim 1, but “does not disclose an ink follower, comprising at
least a base oil and a thickener and satisfies that the point at which its tan
delta in viscoelasticity determination [] excee[d]s 1 falls within a range of
20 rad/s < ω < 450 rad/s.” Ans. 4. However, the Examiner further found
that Case discloses such an ink follower. Id. Pointing to Table 1 of Case,
the Examiner found that because tanδ equals 5.45 at a frequency of 25.12
rad/s and 54.26 at a frequency of 500 rad/s, Case discloses tanδ exceeding 1
in the frequency range of 20 rad/s ≤ ω ≤ 450 rad/s. Ans. 8.
Independent claim 1 requires, inter alia, an ink follower wherein “the
point (ω) at which its tanδ . . . exceeds [] 1 falls within a range of 20 rad/s ≤
ω ≤ 450 rad/s.” See App. Br., Claims App’x. As noted above, an ordinary
and customary meaning of the term “exceed” is “to go beyond a limit set
by.” MERRIAM WEBSTER’S COLLEGIATE DICTIONARY (10th Ed. 1997). In
this case, we agree with Appellant that in Case, “the point (ω) at which its
tanδ . . . exceeds [] 1,” that is, its tanδ goes beyond the limit of 1, “falls
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within a range of” 1 rad/s ≤ ω ≤ 1.59 rad/s. See App. Br. 12, Fig. 1; see
also Case, Table 1. Although we appreciate the Examiner’s position that
Case discloses tanδ exceeding 1 in the frequency range of 20 rad/s ≤ ω ≤
450 rad/s, nonetheless, the point at which its tanδ exceeds 1, that is, the point
at which its tanδ goes beyond 1, does not fall within a range of 20 rad/s ≤ ω
≤ 450 rad/s, as called for by independent claim 1.
Thus, because neither Loftin nor Case discloses the limitation “the
point (ω) at which its tanδ in viscoelasticity determination” exceeds 1 “falls
within a range of 20 rad/s ≤ ω ≤ 450 rad/s,” we do not sustain the rejection
of independent claim 1 and its dependent claims 2 and 4 under 35 U.S.C. §
103(a) as unpatentable over Loftin and Case. See In re Fine, 837 F.2d 1071,
1076 (Fed. Cir. 1988).

The obviousness rejection based upon Loftin, Case, and Yoshii
With respect to the rejection of claims 3 and 5-7, the addition of
Yoshii does not remedy the deficiencies of Loftin and Case as described
supra. Accordingly, the rejection of claims 3 and 5-7 under 35 U.S.C.
§ 103(a) as unpatentable over Loftin, Case, and Yoshii likewise cannot be
sustained.

SUMMARY
The decision of the Examiner to reject claims 1-7 is reversed.

REVERSED

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