Ex Parte Takasu

Patent Trial and Appeal Board

Mar 20, 2013

11889249 (P.T.A.B. Mar. 20, 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 2011-006517
Application 11/889,249
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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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).

THE 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. 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 selected from (i) a shear-
thinning aqueous ink that has a viscosity of from 3
to 160 mPa·s, measured with an E-type rotary
viscometer at 20°C and at 100 rpm, and has a
shear-thinning index of from 0.9 to 0.99, and (ii) 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
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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 1 falls within a range of 20
rad/s ≤ ω ≤ 450 rad/s.

THE 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. § 102(b) as
anticipated by Loftin (US 5,048,992, iss. Sep. 17, 1991).
The Examiner rejected claims 3 and 5-7 under 35 U.S.C. § 103(a) as
unpatentable over Loftin and Yoshii (US 6,305,865 B1, iss. Oct. 23, 2001).
The Examiner also objected under 35 U.S.C. § 132(a) to an
amendment to the Specification filed on Sep. 22, 2009 on the grounds that
the amendment introduced new matter into the original disclosure. The
Examiner’s rejection under 35 U.S.C. § 112, first paragraph, for failure to
comply with the written description requirement is related to the objection
made by the Examiner to Appellant’s Sep. 22, 2009 amendment. See Final
Rejection 2, mailed Jan. 8, 2010. In particular, the Examiner objected under
35 U.S.C. § 132 and rejected under 35 U.S.C. § 112, first paragraph, the
same subject matter on the ground that these claimed features are not
supported by the original disclosure. Id.

SUMMARY OF DECISION
We REVERSE.

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ANALYSIS
The Written Description Rejection and New Matter Objection
The Examiner found that the limitation in independent claim 1,
namely, “the point (ω) at which its tanδ in viscoelasticity determination
exceeds 1 falls within a range of 20 rad/s ≤ ω ≤ 450 rad/s,” is not
supported by Appellant’s original disclosure. 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
filling because there have been several attempts to change the claim with
various expressions other than ‘over 1’ during the prosecution history.”
Ans. 5-6.
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 amounts to “a reasonable
doubt as to the possession of the claimed limitation at the time of filling,” 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. 20.
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
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defined by the Merriam-Webster Online Dictionary1.” App. Br. 8-9. 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 either “highly elastic and [] poorly viscous”
when tanδ < 1 and “poorly elastic and [] highly viscous” when tanδ > 1.
Spec. 19. Thus, the viscoelastic behavior of the ink follower changes
between highly elastic/poorly viscous to poorly elastic/highly viscous when
tanδ changes 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.
With respect to the Examiner’s objection to the Specification in the
Final Rejection, ordinarily, an objection is reviewable by petition under 37
C.F.R. § 1.181 and a rejection is appealable to the Patent Trial and Appeal
Board. When the issue of new matter presented is the subject of both an
objection and a rejection, the issue is appealable. Manual of Patent

1 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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Examining Procedure (MPEP) § 2163.06, II. Review of New Matter
Objections And/Or Rejections (8th Ed., Rev. 8, July 2010). See also MPEP
§ 608.04(c) (“where the alleged new matter is introduced into or affects the
claims, thus necessitating their rejection on this ground, the question
becomes an appealable one, and should not be considered on petition even
though that new matter has been introduced into the specification also.”). To
the extent that the objection to the Specification in the Final Rejection turns
on the same issues as the rejection under 35 U.S.C. § 112, first paragraph,
our decision with respect to the rejection is dispositive as to the
corresponding objection.

The anticipation rejection based upon Loftin
The Examiner found that Loftin teaches all the limitations of
independent claim 1 including “an ink follower . . . compris[ing] at least a
base oil and a thickener and satisfies that the point at which its tanδ in
viscoelasticity determination exceeds 1 falls within a range of
20 rad/s < ω < 450 rad/s.” Ans. 4. Pointing to Table 1 of Case (US
4,671,691, iss. Jun. 9, 1987), which is incorporated by reference in Loftin
(see Loftin, col. 1, ll. 30-33), the Examiner found that because tanδ equals
5.45 at a frequency of 25.12 rad/s and 44.61 at a frequency of 398.10 rad/s,
Case discloses tanδ exceeding 1 in the frequency range of 20 rad/s ≤ ω ≤
450 rad/s. Ans. 6-7.
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
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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 within
a range of” 1 rad/s ≤ ω ≤ 1.59 rad/s. See App. Br. 12 -13, 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 Loftin does not teach 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 claims 1, 2,
and 4 under 35 U.S.C. § 102(b) as anticipated by Loftin.

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

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

REVERSED

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