Ex Parte Todo et al

Board of Patent Appeals and Interferences

Jan 27, 2004

09690731 (B.P.A.I. Jan. 27, 2004)

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The opinion in support of the decision being entered
today was not written for publication and is not binding
precedent of the Board.
Paper No. 31

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte ATSUHIRO TODO,
KAORI OKADA, TOSHIHIRO SEKIGUCHI
and KAZUO HIROTA
______________

Appeal No. 2003-1969
Application 09/690,731
_______________

HEARD: January 8, 2004
_______________

Before WARREN, WALTZ and DELMENDO, Administrative Patent Judges.

WARREN, Administrative Patent Judge.
Decision on Appeal and Opinion
We have carefully considered the record in this appeal under 35 U.S.C. § 134, including
the opposing views of the examiner, in the answer, and appellants, in the brief and reply brief,
and based on our review, find that we cannot sustain the rejections of appealed claims 4 through
7,1 all of the claims in the application, under 35 U.S.C. § 103(a) as being unpatentable over
Kondo et al. (Kondo) in view of Kato, Smith et al., Hu, Miller et al. (Miller) or Van Rheenen
et al.2

1 See the appendix to the brief (Paper No. 22).
2 Answer, pages 4-5.
Appeal No. 3-1969
Application 09/690,731
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We find that when considered in light of the written description in the specification as
interpreted by one of ordinary skill in this art, see, e.g., In re Thrift, 298 F.3d 1357, 1364,
63 USPQ2d 2002, 2006 (Fed. Cir. 2002); In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d
1023, 1027 (Fed. Cir. 1997), In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed.
Cir. 1989), the plain language of appealed independent claim 4 specifies that the claimed dental
glass ionomer cement composition comprises, inter alia, a coloring matter whose color is
specified as having an “L* value . . . in a standard illuminant D65” of “60 or less” and is selected
from the stated Markush group of “coloring matter.”
The examiner correctly recognizes that Kondo does not disclose a coloring agent that falls
within the Markush group of “coloring matter” in appealed claim 4, for use in the disclosed
dental glass ionomer cement composition taught in the reference. In this respect, the examiner
takes the position that one of ordinary skill in the art would have recognized that other coloring
agents, such as the coloring agents in the secondary references characterized by the examiner as
“pH sensitive,” can be used in the dental glass ionomer composition of Kondo because Kondo
teaches “employing coloring agents which are pH sensitive.” Thus, the examiner alleges that one
of ordinary skill in the art would have combined the specified coloring agents of the secondary
references, which fall within the Markush group of “coloring matter” in claim 4, with the
teachings of Kondo in order to obtain a glass ionomer cement within the teachings of the
reference, and accordingly, arrive at the claimed invention (answer, pages 4-5).
Appellants point out that the coloring agent used in the composition of Kondo must
change “its color tone with the change in pH so that the color tone of the cement composition can
change upon initial setting of the cement composition” such that the “color change is relied upon
for visual observation of the degree of setting of the cement composition,” and submit that the
“coloring matter” specified in appealed claim 4 “is not a pH indicator” as required by Kondo
(brief, page 4; see also reply brief, page 2). Appellants further point out that while the coloring
agent alizarin is disclosed in their specification and in Kondo, it is not encompassed by appealed
claim 4, and submit that “[t]he fact that the disclosure is broader than the claims now present in
the case manifestly cannot be relied upon by the Examiner for a holding of obviousness of the
Appeal No. 3-1969
Application 09/690,731
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now claimed invention, not including such broader disclosure,” relying on the authority of In re
Ruff, 256 F.2d 590, 118 USPQ 340 (CCPA 1958) (brief, page 5; see also reply brief, page 3).
The examiner responds that the disclosure of alizarin establishes that appellants’
“assertion based on no change in the color has no probative value since . . . alizarin changes color
in [Kondo], and it would change color in the instant composition due to the same composition,”
and that “many of the instant coloring matters are known to the pH indicators as evidenced by the
secondary references” (answer, page 5; emphasis in original deleted).
We agree with appellants’ position. Even assuming that the secondary references
establish that the dyes encompassed by appealed claim 4 that the examiner points to therein (see
answer, page 4, fourth full paragraph) are in fact pH sensitive dyes, there still must be some basis
for combining such disclosures with the teachings of Kondo. In other words, there must be some
suggestion, motivation or knowledge in the prior art applied by the examiner that would have led
one of ordinary skill in this art to combine such teachings in the reasonable expectation of
obtaining a color-changeable cement composition which has the properties taught by Kondo. See
generally, In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433-34 (Fed. Cir. 2002);
Smith Industries Medical Systems, Inc. v. Vital Signs, Inc., 183 F.3d 1347, 1356, 51 USPQ2d
1415, 1420-21 (Fed. Cir. 1999); In re Rouffet, 149 F.3d 1350, 1358, 47 USPQ2d 1453, 1458
(Fed. Cir. 1998); In re Mayne, 1043 F.3d 1339, 1342, 41 USPQ2d 1451, 1454 (Fed. Cir. 1997);
ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 9292, 933 (Fed. Cir.
1984); In re Keller, 642 F.2d 413, 425-26, 208 USPQ 871, 881-82 (CCPA 1981).
We find that Kondo teaches that “[g]enerally, the pH of a mixed dental cement slurry
changes from acidic to neutral according to its setting process” and “the color-changeable
substances have a discoloring characteristic at a pH or 7 or less” (col. 3, lines 19-23). Kondo
discloses that the glass ionomer cement composition must be “highly aesthetic after setting” and
the “addition of a color-changeable substance thereto gives rise to no appreciable influence on
the color of the cement after setting” (col. 1, lines 50-64, and col. 2, lines 4-8).
The examiner has not identified any teaching in any of the secondary references which
would have suggested or motivated one of ordinary skill in the art to use the dyes identified
therein in the dental glass ionomer cements taught by Kondo. The only teachings in this respect
Appeal No. 3-1969
Application 09/690,731
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that we have found is in Miller, wherein a dye which is colorless at a low pH in an undercolor
aqueous coloring composition, changes to the color state upon the addition of a base containing
composition (e.g., col. 3, lines 13-27), and the “dyes in the low pH undercolor coloring
composition are dyes which are in a colorless state in the presence of a pH of about 3.5 or less”
(col. 9, lines 3-5), which include “pthalocyanine [sic, phthalocyanine] dyes” (col. 9, line 7)
identified by the examiner (answer, page 4, fourth full paragraph). It is apparent from such
teachings that the phthalocyanine dyes change to the color state at a pH above 3.5. Thus, on this
record, we determine that one of ordinary skill in this art would not have reasonably believed that
such phthalocyanine dyes falling within the teachings of Miller can provide the discoloring
characteristic during the curing of the dental glass ionomer cements and the aesthetic appearance
in the set cement as required by Kondo, as the examiner contends.
Accordingly, we conclude that the examiner has not pointed to some teaching, suggestion
or motivation in the applied prior art which would have led one or ordinary skill in the art to
combine Kondo with the particular dyes relied on in the secondary references. Accordingly,
because the examiner has not established a prima facie case of obviousness, we reverse the
ground of rejection.
The examiner’s decision is reversed.

Appeal No. 3-1969
Application 09/690,731
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Reversed

CHARLES F. WARREN )
Administrative Patent Judge )
)
)
)
THOMAS A. WALTZ ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
ROMULO H. DELMENDO )
Administrative Patent Judge )

Appeal No. 3-1969
Application 09/690,731
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Oblon, Spivak, McClelland, Maier & Neustadt, P.C.
1940 Duke Street
Alexandria, VA 22314