Ex Parte Cook et al

Patent Trial and Appeal Board

Nov 23, 2012

10863525 (P.T.A.B. Nov. 23, 2012)

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.
10/863,525 06/09/2004 Roger B. Cook 46117 5452
1609 7590 11/26/2012
ROYLANCE, ABRAMS, BERDO & GOODMAN, L.L.P.
1300 19TH STREET, N.W.
SUITE 600
WASHINGTON,, DC 20036
EXAMINER
XAVIER, VALENTINA
ART UNIT PAPER NUMBER
3645
MAIL DATE DELIVERY MODE
11/26/2012 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROGER B. COOK and ARSALAN D. AZARI
____________

Appeal 2010-010462
Application 10/863,525
Technology Center 3600
____________

Before STEVEN D.A. McCARTHY, MICHELLE R. OSINSKI, and
JILL D. HILL, Administrative Patent Judges.

HILL, Administrative Patent Judge

DECISION ON APPEAL
Appeal 2010-010462
Application 10/863,525

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Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1, 3, 7-14, 21, 22, and 24. App. Br. 4. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm-in-part.
REJECTION
Appellants seek review of the Examiner’s rejection of claims 1, 3, 7,
and 8 under 35 U.S.C. § 103(a) as unpatentable over Clough (US
2005/0086850 A1, pub. Apr. 28, 2005) and Mefferd (US 6,318,020 B1, iss.
Nov. 20, 2001) (App. Br. 8); and the Examiner’s rejection of claims 1, 3, 9-
14, 21, 22, and 24 under 35 U.S.C. § 103(a) as unpatentable over Clough
and Smith (US 6,153,299, iss. Nov. 28, 2000) (id).
ANALYSIS
The claimed subject matter relates to a polymeric fishing line having a
reversible color-changing dye and a stabilizer therein.
Claim 1 is the only independent claim on appeal; is illustrative of the
subject matter on appeal; and is reproduced below with the key disputed
limitations emphasized:
1. Fishing line having a composition consisting
essentially of: (a) at least one polymeric component; (b) at least
one reversible color-changing agent consisting of a
photochromic, thermochromic, and solvatochromic dye
disposed within, on, or distributed throughout said polymeric
component, wherein said reversible color-changing agent is
selected from the group consisting of a photochromic,
thermochromic, and solvatochromic material that changes its
perceived color as a consequence of a change in ambient
electromagnetic radiation, temperature, or moisture level,
respectively, and (c) a stabilizing agent for said color-changing
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agent.1

Rejection of Claims 1, 3, 7, and 8 under 103(a) over Clough and Mefferd
The Examiner finds that Clough teaches a polymeric fishing line
consisting of a polymeric component and at least one color element. Ans. 3.
The Examiner admits that Clough does not disclose a photochromic,
thermochromic, or solvatochromic dye. Id. The Examiner finds, however,
that Mefferd teaches a thermochromic agent and virgin clear oil, and that the
virgin clear oil is a stabilizing agent because it provides stability to the
thermochromic agent. Ans. 3-4 (citing Mefferd, col. 2, ll. 44-45).
Appellants argue that Mefferd does not disclose that its virgin clear oil
acts as a stabilizer within the fishing line, but instead discloses that the oil is
used as a separation medium prior to application of the colorant. App. Br.
12, Reply Br. 12. Applicants also argue that “[e]ven if some of the oil is
entrained with the pigment solids [after the oil is skimmed to allow recovery
of clean undamaged powder for application to the fishing lure], there is no
teaching or suggestion that the oil would act either as a dispersion stabilizer
that affects the suspension characteristics of the dispersion or as a chemistry
stabilizer that affects the service life of dye component.” Reply Br. 12. We
agree with Appellants that the Examiner has not shown Mefferd’s virgin
clear oil to be a “stabilizing agent for said color-changing agent” as claimed.

1 We assume, for the purposes of this appeal only, that the limitation “at
least one reversible color-changing agent consisting of a photochromic,
thermochromic, and solvatochromic dye” as recited in claim 11 is a
limitation of alternatives meaning that each reversible color-changing agent
encompassed by the recitation “at least one reversible color-changing agent”
consists of either a photochromic dye, a thermochromic dye, or a
solvatochromic dye to ensure consistency with the remainder of the claim
language.
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We therefore do not sustain the rejection of claims 1, 3, 7, and 8 under
35 U.S.C. § 103(a) as unpatentable over Clough and Mefferd.
Rejection of Claims 1, 3, 9-14, 21, 22, and 24 over Clough and Smith
Appellants argue claims 1, 3, 9-14, 21, 22, and 24 as a group on the
basis of claim 1. App. Br. 16-18. We select claim 1 as the representative
claim. See 37 C.F.R. § 41.37(c)(1)(vii). Claims 3, 9-14, 21, 22, and 24 will
stand or fall with claim 1.
The Examiner finds that Clough teaches a polymeric fishing line
consisting of a polymeric component and at least one color element, but not
a photochromic dye. Ans. 4-5. The Examiner finds, however, that Smith
teaches a fishing line having at least one polymeric component and at least
one reversible color-changing agent disposed within or distributed
throughout the polymeric component. The color changing component is
selected from a group of photochromic, solvatochromic, and thermochromic
materials that change color with a change in ambient electromagnetic
radiation, moisture level, or temperature. Id. (citing Smith, col. 18, ll. 30-36
and col. 21, ll. 15-22). The Examiner concludes that “it would have been
obvious to provide the fishing line of Clough with a photochromic coloring
agent as shown by Smith since merely the substitution of one colorant for
another is contemplated.” Ans. 5 (citing KSR Int’l v. Teleflex Inc., 550 U.S.
398, 416 (2007)). Appellants argue that both Clough and Smith are directed
to pigments and that Smith teaches neither a dye nor a stabilizer. App. Br.
16.
Claim 1 recites fishing line having a composition consisting
essentially of a polymeric component, a stabilizer, and “at least one
reversible color-changing agent consisting of a photochromic,
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thermochromic, and solvatochromic dye.” To determine whether Smith
discloses the claimed reversible color-changing agent, we first construe the
above claim limitation. Claim 1 excludes the presence of other agents and
materials that would materially change the basic effects and properties of the
recited ingredients if Appellants have provided a clear indication in the
Specification or Claims of what the basic and novel characteristics actually
are and what constitutes a material change in the basic and novel
characteristics of the invention. See PPG Indus. v. Guardian Indus. Corp.,
156 F.3d 1351, 1354 (Fed. Cir. 1998).
Appellants allege that insoluble particles would materially change (for
the worse) the basic effects and properties of a fishing line made from the
ingredients listed in claim 1, and appear to therefore be arguing that Smith’s
dye in a solid first matrix component is an insoluble particle. Reply Br. 13
(citing App. Br. 17-18). Appellants provide no persuasive evidence that
Smith’s dye in a solid first matrix component is an insoluble particle.
Appellants also do not allege that their Specification or Claims provide a
clear indication of what the basic and novel characteristics of the invention
are or what constitutes a material change in the basic and novel
characteristics of the invention. Rather, Appellants allege that “Smith et al.
goes to great lengths to establish that the double matrix solids coloring
system disclosed is materially different with different properties than the use
of a dye only.” App. Br. 18.
However, this allegation, even if true, does not replace the
requirement that Appellants’ Specification or Claims provide a clear
indication of what the basic and novel characteristics of the invention are or
what constitutes a material change in the basic and novel characteristics of
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the invention. Lacking such a clear indication, we are not persuaded that the
transition phrase “consistently essentially of” should be used differently than
the open transition phase “comprising.” See PPG, 156 F.3d at 1355 (for the
purposes of searching for and applying prior art under 35 U.S.C. § 102 and
35 U.S.C. § 103, absent a clear indication in the specification or claims of
what the basic and novel characteristics actually are and what constitutes a
material change in the basic and novel characteristics of the invention,
“consisting essentially of” will be construed as equivalent to “comprising”).
Thus, claim 1 should be construed such that the fishing line can include
more than the claimed polymeric component, stabilizer, and at least one
reversible color-changing agent consisting of a photochromic dye.
Apart from this, Appellants do not appear to point to anything in the
Specification which implies that the term “polymer component” is limited to
a single polymer matrix. The Specification itself suggests the contrary.
Compare Spec., para. 0049 with Smith, col. 3, ll. 31-41. Even taking into
account any limiting effect of the transitional phrase “consisting essentially
of,” the positively recited “polymer component” encompasses the polymeric
component of a double matrix solids coloring system.
Appellants contend that Smith fails to teach a dye. App. Br. 16.
Smith discloses a polymer composition comprising in admixture, a polymer
matrix, at least one particle scattering colorant, and at least one electronic
transition colorant, dye or pigment. Smith, col. 4, ll. 14-17. Smith also
discloses a stabilizer. Smith, col. 21, l. 21. Smith further discloses that a
host of color changing chemicals suitable for its invention are well known,
such as the anils, fulgides, spiropyrans, and other photochromic organics.
Such color changing chemicals can be employed as electronic transition
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colorants that modify the visual effect of particle scattering colorants in
polymer composites. Smith, col. 21, ll. 19-24. The Examiner alleges that
Smith’s disclosed spiropyrans are organic dyes. Ans. 7. Appellants do not
dispute that spiropyrans are reversible color changing agents or that
spiropyrans are organic dyes.
We therefore sustain the rejection of claim 1 under 35 U.S.C. § 103(a)
as unpatentable over Clough and Smith. Claims 3, 9-14, 21, 22, and 24 fall
with claim 1.

DECISION
We reverse the Examiner’s rejection of claims 1, 3, 7, and 8 under 35
U.S.C. § 103(a) as unpatentable over Clough and Mefferd.
We affirm the Examiner’s rejection of claims 1, 3, 9-14, 21, 22, and
24 under 35 U.S.C. § 103(a) as unpatentable over Clough and Smith.

AFFIRMED-IN-PART

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