Ex Parte Sturley

Board of Patent Appeals and Interferences

Jul 9, 2012

10977592 (B.P.A.I. Jul. 9, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/977,592 10/29/2004 David K. Sturley Sturley-CPA 1145
7590 07/10/2012
Michael D. Wiggins
950 Harmon St.
Birmingham, MI 48009
EXAMINER
KHATRI, PRASHANT J
ART UNIT PAPER NUMBER
1783
MAIL DATE DELIVERY MODE
07/10/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID K. STURLEY
____________

Appeal 2011-008211
Application 10/977,592
Technology Center 1700
____________

Before LINDA M. GAUDETTE, MICHAEL P. COLAIANNI, and
DONNA M. PRAISS, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision1
finally rejecting claims 1-4, 6, 8-10, and 12-32 under 35 U.S.C. §112, first
paragraph, for failure to comply with the written description requirement, and
finally rejecting claims 1-4, 6, 8-10, and 12-32 under 35 U.S.C. §103(a) as
unpatentable over Mortz et al. (U.S. Patent 6,183,102, issued Feb. 6, 2001) in

1 Final Office Action mailed June 8, 2010 (“Final”).
Appeal 2011-008211
Application 10/977,592

2
view of Burnell-Jones (U.S. Patent 6,207,077, issued Mar. 27, 2001).2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
The invention relates to “non-powered luminous devices containing
luminescent particles” (Spec.3 [0002]) and, more particularly, “[a] non-powered
luminous device compris[ing] an elongate member that is at least one of
transparent and/or translucent and that defines a cavity . . . and includes a light
transmissive resinous material containing a suspension of luminescent particles”
(Spec. [0008].) Claim 1 is representative of the invention and is reproduced
below from the Claims Appendix to the Appeal Brief:
1. A non-powered luminous device, comprising:
an elongate tubular member that is at least one of transparent
and/or translucent, that defines an enclosed cavity and that includes
first and second openings to the enclosed cavity at opposite ends of the
elongate tubular member, wherein the elongate tubular member is
flexible; and

a luminous material that is located in the enclosed cavity and in
contact with inner walls of the enclosed cavity, that includes a light
transmissive resinous material containing a suspension of
photoluminescent particles, wherein the luminous material is cast and
cured in the enclosed cavity, substantially fills the cavity after curing
and remains flexible after curing.

2 Appeal Brief filed Oct. 25, 2010 (“App. Br.”). Although Mortz and Burnell-
Jones were applied to each of the claims on appeal either together or in further
view of additional prior art references, Appellant does not provide separate
substantive arguments for claims 2-4, 6, 8-10, and 12-32 or regarding any of the
other cited references. Therefore, claims 2-4, 6, 8-10, and 12-32 stand or fall
together with claim 1.
3 Specification filed Oct. 29, 2004 (“Spec.”).
Appeal 2011-008211
Application 10/977,592

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Rejection under 35 U.S.C. 112, first paragraph (written description)
The Examiner rejected the claims for lack of written description support of
the recited “substantially fills the cavity after curing” finding support for “fills”
and “curing,” but not “substantially fills.” (Ans. 4). Appellant argues written
description support is provided in Figures 8A and 8B in the Specification, which
show the use of a vacuum to fill the tubular member with resin, combined with the
described low shrinkage resin option (Spec. [¶0052]) which would make the
cavity “full less any shrinkage that may occur during curing.” App. Br. 8, 11.
Appellant further relies on Figures 6A-6F to support “substantially filling the
cavity” (id. at 11). Figures 6A-6F are cross-sections of “[t]he inner cavity 108 of
the elongate member 104 [that] receives luminescent resinous material 112 . . .”
(Spec. [¶0051]).
The claimed subject matter need not be described “in haec verba” in the
original specification in order to satisfy the written description requirement. In re
Wright, 866 F.2d 422, 425 (Fed. Cir. 1989). Rather, “[t]he test . . . is whether the
disclosure of the application as originally filed reasonably conveys to the artisan
that the inventor had possession at the time of the later claimed subject matter . . .”
In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983).
We are persuaded by Appellant that “those skilled in the art would clearly
understand the term substantially to mean that the cavity is full less any shrinkage
that may occur during curing.” (App. Br. 11). The disclosure of a “low shrinkage
resin” in the Specification at [¶0052] supports the position of Appellant that those
skilled in the art would understand that curing will result in shrinkage of the resin
to some amount that results in the cavity being less than completely filled and that
resins are available to minimize such shrinkage. Therefore, we reverse the
Appeal 2011-008211
Application 10/977,592

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rejection of claims 1-4, 6, 8-10, and 12-32 under 35 U.S.C. §112, first paragraph,
for lack of written description support.
Rejection under 35 U.S.C. §103(a)
Mortz establishes that at the time of the invention, it was known in the non-
powered luminous device art to fill the interior of an open core of a plastic, tubular
member with a slurry containing a phosphorescent material mixed with “water or
other base liquid material.” (Ans. 5; Mortz, col. 3, ll. 25-38, 54-62; col. 4, ll. 15-
26.)
Burnell-Jones evidences that at the time of Appellant’s invention, it was
known in the art to suspend phosphorescent particles in thermosetting polyester to
produce a flexible, luminescent polymer. (Ans. 6; Burnell-Jones, col. 8, ll. 17-34.)
Based on the above findings of fact, the Examiner concluded it would have
been obvious to one of ordinary skill in the art to use the resin-based
phosphorescent suspension as taught by Burnell-Jones in the Mortz tubular
member for the purpose of “having water resistance (Burnell-Jones, col. 8, ll. 53-
55) and [being] modified into a resin for molding, casting, and the like (id. at col.
8, ll. 17-46).” (Ans. 7, 21).
Appellant disputes the Examiner’s proposed motivation to use Burnell-
Jones’ suspension to fill Mortz’ tubular member, arguing Mortz “expressly
teaches away . . . by disclosing embodiments having substantially open cavities or
clear cores.” App. Br. 12. Appellant points to a preferred embodiment in Mortz
where a slurry mixture containing water is dried and argues that “once the water
dries in Mortz et al, the luminescent particles are no longer in a suspension.” App.
Br. 13. Appellant also asserts that “[s]ome luminescent particles such as
Luminova cannot be subject to moisture either during use or fabrication.” App.
Br. 14.
Appeal 2011-008211
Application 10/977,592

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In a determination of obviousness, a reference may be relied upon for all
that it would have reasonably suggested to one having ordinary skill in the art.
Merck & Co. v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the
[prior art] patent discloses a multitude of effective combinations does not render
any particular formulation less obvious.”). Furthermore, “a reference is not
limited to the disclosure of specific working examples.” In re Mills, 470 F.2d
649, 651 (CCPA 1972) (citation omitted). The Mortz reference discloses other
embodiments wherein “[t]he phosphorescent material . . . may be applied by either
a slurry process such as was described in the first preferred embodiment, or as is
also contemplated by the instant invention, may completely fill part or all of the
interior open core.” (Mortz, col. 4, ll. 22-26).
Appellant does not dispute that if properly combined, the claims would
have been obvious over the combination of Mortz and Burnell-Jones.
Appellant contends the Examiner reversibly erred in rejecting the claims
over the combination of Mortz and Burnell-Jones because:
It is difficult to understand why one skilled in the art would look
to Burnell-Jones given the implicit goal of Mortz et al. to have
either an open core or a clear core as described above. The
Examiner’s reliance on the teachings of Burnell-Jones is
misplaced since it would not be consistent with any of the
approaches taught by Mortz et al. (App. Br. 15).

“If a person of ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize that
it would improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.” KSR Int'l Co. v. Teleflex,
Inc., 550 U.S. 398, 417 (2007).
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Application 10/977,592

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Both Mortz and Burnell-Jones are directed to encapsulated phosphorescent
particles in a suspension that is resin or liquid based. As correctly observed by
Appellant (App. Br. 15), Burnell-Jones differs from the claimed invention and
Mortz in that Burnell-Jones utilizes the suspension of phosphorescent pigment in a
polymer resin as a moldable resin, a casting resin, a gel coat, a laminating resin
and the like (Burnell-Jones, col. 8, ll. 32-34). However, Appellant has not
explained why one of ordinary skill in the art would not have (1) possessed the
requisite skills to utilize the resin-based suspension of phosphorescent particles in
a plastic tubular member, and (2) had a reasonable expectation of success in so
doing. Appellant has not persuasively demonstrated that Mortz, if modified to
contain the resin-based suspension of photoluminescent particles of Burnell-Jones,
rather than using a slurry base, would not have resulted in the invention as
claimed.
For the reasons stated above and in the Answer, we affirm the Examiner’s
decision to reject claims 1-4, 6, 8-10, and 12-32.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED-IN-PART

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