Ex Parte WASE et al

Patent Trial and Appeal Board

May 23, 2016

12124211 (P.T.A.B. May. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/124,211 05/21/2008
65565 7590 05/25/2016
SUGHRUE-265550
2100 PENNSYLVANIA AVE. NW
WASHINGTON, DC 20037-3213
FIRST NAMED INVENTOR
Takashi W ASE
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Ql08277 2282
EXAMINER
LE,HUYEND
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
05/25/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
SUGHRUE265550@SUGHRUE.COM
PPROCESSING@SUGHRUE.COM
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte T AKASHI W ASE,
MICHIYUKI YASUDA, and
YOSHIAKI OKAW ARA
Appeal2014-004343
Application 12/124,211
Technology Center 3700
Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
MARK A. GEIER, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1-15 and 21--40. App. Br. 3. Claims 16-20 and 41--45
have been withdrawn. App. Br. 15-17, 22-24 (Claims Appendix). We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal2014-004343
Application 12/124,211
THE CLAIMED SUBJECT MATTER
The disclosed subject matter "relates to a friction body capable of
thermally discoloring a thermochromic image or handwriting by frictional
heat, a writing instrument having the friction body and a writing instrument
set including a combination of the friction body and the writing instrument."
Spec. i-f 1. Claims 1, 21, 26, 3 0, and 3 5 are independent. Claim 1 is
reproduced below and is illustrative of the claims on appeal:
1. A friction body which is adapted to rub a thermochromic
image or handwriting formed on a paper surface by use of
thermochromic ink to thermally discolor the thermochromic
image or handwriting by frictional heat resultant from rubbing,
wherein thermal conductivity of a friction portion of the
friction body is ranging from 0.05 W/(m•K) to 50 W/(m•K).
REFERENCES RELIED ON BY THE EXAMINER
Sekine JP 2004-148744 May 27, 2004
Chiga JP 2006-123324 May 18, 2006
THE REJECTIONS ON APPEAL
Claims 1-14 and 21--40 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Chiga.
Claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Chiga and Sekine.
ANALYSIS
The rejection of claims 1-14 and 21-40
as unpatentable over Chiga
Each independent claim on appeal, i.e., claims 1, 21, 26, 30, and 35,
includes a recitation to a range of values. For example, claim 1 recites a
range for thermal conductivity while claims 21, 26, 30, and 35 recite a range
for a friction body relationship. The Examiner rejects each of these claims
2
Appeal2014-004343
Application 12/124,211
for similar reasons, i.e., Chiga discloses use of similar material and
"[ t ]herefore it would have been obvious to one of skill in the art to have the
same thermal conductivity or friction coefficient as claimed." Final Act. 2;
see also Final Act. 3. The Examiner finds that as per Chiga, "there is a co-
relationship between the heat by the friction body and the discoloration or
disappearance of the image or handwriting." Ans. 4. More specifically, the
Examiner finds that it would have been obvious to select a value "within a
certain range to best fit a particular writing device design and to optimize the
performance." 1 Final Act. 2 (citing In re Aller, 220 F.2d 454 (CCPA 1955)).
Appellants contend that the claimed parameters must ''first be
recognized as a result-effective variable." App. Br. 7 (referencing "the
MPEP"); see also Reply Br. 5. According to Appellants, recognition of
thermal conductivity or friction relationships as being a result-effective
variable is lacking in Chiga. See App. Br. 7-8; Reply Br. 4---6. "There is no
such recognition or showing in [Chiga] that varying thermal conductivity of
the friction body will result in varying the discoloration caused due to the
frictional heat generated." App. Br. 7; see also App. Br. 8 and Reply Br. 4.
"Therefore, the Examiner has not shown the prior art has identified a result
affecting parameter." App. Br. 8; see also Reply Br. 4.
We are instructed by our reviewing court that before the determination
of the optimum or workable ranges of a variable might be characterized as
1 "Discovering a workable range of a physical property (i.e., thermal
conductivity) of a known material is not an invention that is patentable."
Ans. 4. The Examiner further states that "[ f]inding a parameter for the
friction body that provides optimum discoloration without damaging the
paper would be an obvious routine experimentation to one skill[ ed] in the
art." Ans. 5.
3
Appeal2014-004343
Application 12/124,211
routine experimentation, a particular parameter must first be recognized as a
result-effective variable. See In re Antonie, 559 F.2d 618, 620 (CCPA 1977)
(stating that the prior art did not recognize that treatment capacity is a
function of the tank volume to contractor ratio, and therefore optimization of
this parameter was not recognized in the art to be a result-effective variable).
Here, the Examiner does not identify any disclosure in Chiga that a variation
in thermal conductivity will result in a variation in the resultant
discoloration. 2 See App. Br. 7-8. Instead, the Examiner acknowledges that
Chiga "does not specifically disclose the thermal conductivity of the friction
body." Ans. 3--4. Nevertheless, the Examiner reiterates that Chiga "teaches
the friction body made of a similar material" and therefore it would have
been obvious to use a material "that has a range of thermal conductivity as
claimed to optimize the performance of the device." Ans. 4.
We agree with the Examiner that the discovery of an optimum value
of a result effective variable is ordinarily within the skill of the art. See In re
Boesch, 617 F.2d 272, 276, (CCPA 1980); Aller, 220 F.2d at 456. However,
as indicated supra, the particular parameter must first be recognized as a
result-effective variable. In re Antonie, 559 F .2d at 620. Lacking any
indication that the variables recited by Appellants are result-effective
variables, or any other articulated reasoning for modifying the prior art
devices to arrive at the claimed subject matter, we do not sustain the
Examiner's rejection of independent claims 1, 21, 26, 30, and 35.
2 As per Appellants, "the Examiner says without providing any support that
' ... varying thermal conductivity of the friction body will change the friction
heat."' App. Br. 8 (quoting Final Act. 4).
4
Appeal2014-004343
Application 12/124,211
Accordingly, we do not sustain the Examiner's rejection of claims 1-14 and
21--40 as unpatentable over Chiga.
The rejection of claim 15 as unpatentable over Chiga and Sekine
Claim 15 depends from claim 14 and includes the additional
limitation, "the friction body is provided at a rear end of the writing
instrument main body." The Examiner relies on the Sekine for disclosing
this limitation. Final Act. 3. The Examiner does not rely on Sekine for
disclosing a result-effective variable. Lacking same, and for the same
reasons discussed supra, we do not sustain the Examiner's rejection of claim
15.
DECISION
The Examiner's rejections of claims 1-15 and 21--40 are reversed.
REVERSED
5