Ex Parte Fujita

Board of Patent Appeals and Interferences

Apr 29, 2010

10845128 (B.P.A.I. Apr. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KATSUYUKI FUJITA
____________

Appeal 2009-012423
Application 10/845,128
Technology Center 1700
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Decided: April 29, 2010
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Before BRADLEY R. GARRIS, CHUNG K. PAK, and
MARK NAGUMO, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-3 and 5-8. We have jurisdiction under 35 U.S.C.
§ 6.
We REVERSE.

Appeal 2009-012423
Application 10/845,128

Appellant claims a thermochromic coloring color-memory
composition comprising an electron donative coloring organic compound, an
electron accepting compound, and an ester compound represented by a
particular formula as a reaction medium which controls color reactions of
the electron donative and electron accepting compounds (claim 1).
Representative claim 1 reads as follows:
1. A thermochromic coloring color-memory composition
comprising a homogeneous solubilized mixture of (A) an electron donative
coloring organic compound, (B) an electron accepting compound and (C) an
ester compound represented by the following formula (1) as a reaction
medium which controls color reactions of the components (A) and (B):

wherein R represents an alkyl group or an alkenyl group, having 4 or
more carbon atoms, and

wherein a complete decoloring temperature, T4, is 40°C or higher and
a coloring starting temperature, T2, is 20°C or lower regarding the color
density-temperature curve, and wherein said composition has color-memory
ability at the ordinary temperature range.

The references set forth below are relied upon by the Examiner as
evidence of obviousness:
Greenspan 4,459,059 Jul. 10, 1984
Hasegawa 5,281,570 Jan. 25, 1994
Kurimoto (as translated) JP 3-99036 Apr. 14, 1991
Under 35 U.S.C. § 103(a), the Examiner rejects claims 1-3 and 5-7
over Hasegawa in view of Kurimoto and rejects claim 8 over Greenspan in
view of Hasegawa and Kurimoto.
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Appeal 2009-012423
Application 10/845,128

Each of these rejections relies upon the Examiner’s conclusion of
obviousness set forth below:
At the time of the invention, it would have been obvious
to a person of ordinary skill in the art to use the ester of
Kurimoto as the ester (c) in the composition of Hasegawa.
The motivation to do so would have been to provide a high-
speed response and usefulness at low temperatures (Page 2 ¶
4).

(Ans. 5).
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007).
In the Appeal before us, the Examiner’s obviousness conclusion is not
supported by a rational underpinning. As correctly argued by Appellant (Br.
9-12), the ester compounds of Kurimoto are used as intermediates for liquid
crystal compounds which exhibit high-speed response and low-temperature
utility (Kurimoto trans. 2). Appellant accurately explains that the Kurimoto
reference contains no teaching or suggestion that these ester compounds
would be capable of controlling color reactions of the coloring components
disclosed by Hasegawa and defined by claim 1 (Br. 9-12).
According to the Examiner, the motivation to use Kurimoto’s esters in
the coloring compositions of Hasegawa “would have been to provide a high-
speed response and usefulness at low temperatures (Page 2 ¶ 4 [of
Kurimoto])” (Ans. 5). However, the characteristics of high-speed response
and usefulness at low temperatures relate to the liquid crystals formed from
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Appeal 2009-012423
Application 10/845,128

Kurimoto’s esters (Kurimoto trans. 2) and have no relevance whatsoever to
the coloring compositions of Hasegawa. It follows that, contrary to the
Examiner’s belief, such characteristics would not have motivated an artisan
to use Kurimoto’s esters as the ester component of Hasegawa’s coloring
compositions.
For these reasons, the Examiner’s obviousness conclusion and
correspondingly the § 103 rejections are unsupported by a rational
underpinning. Therefore, we cannot sustain the Examiner’s § 103 rejections
of the appealed claims.
The decision of the Examiner is reversed.
REVERSED

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