Kotobuki & Co., Ltd. et al.

Patent Trials and Appeals Board

Dec 22, 2021

2021001957 (P.T.A.B. Dec. 22, 2021)

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.
16/399,772 04/30/2019 Yuichi Takeuchi P20191002US 1228
21254 7590 12/22/2021
MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC
8321 OLD COURTHOUSE ROAD
SUITE 200
VIENNA, VA 22182-3817
EXAMINER
GULLEDGE, BRIAN M
ART UNIT PAPER NUMBER
1699
MAIL DATE DELIVERY MODE
12/22/2021 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 YUICHI TAKEUCHI
____________

Appeal 2021-001957
Application 16/399,772
Technology Center 1600
____________

Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
TAWEN CHANG, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner’s
decision to reject claims 1–11, 13–16, and 19–21 (Appeal Br. 2).2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as “KOTOBUKI
& CO., LTD. and HOBBIC STUDY INCORPORATED” (Appellant’s
October 16, 2020, Appeal Brief (Appeal Br.) 1).
2 Appellant’s claims 17 and 18 stand withdrawn from consideration.
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STATEMENT OF THE CASE
Appellant’s disclosure relates “to bodypainting inks, bodypainting
instruments including the bodypainting inks, and methods for manufacturing
bodypainting inks” (Spec. ¶ 1). Appellant’s claim 1 is reproduced below:
1. A bodypainting ink, including:
a coloring agent;
a solvent; and
a resin,
wherein the coloring agent comprises an anion coloring
agent, the resin includes a cation monomer, and a molar ratio of
cations, constituting the cation monomer, to anions, constituting
the anion coloring agent, is l or more, and
wherein the solvent includes water and an alcohol, and
the coloring agent and the resin are solved in the solvent as a
liquid.
(Appeal Br. 12.)

Grounds of rejection before this Panel for review:
Claims 1–11, 13–16, and 19–21 stand rejected under 35 U.S.C.
§ 112(b).
Claims 1–11, 13–16, and 19–21 stand rejected under the written
description provision of 35 U.S.C. § 112(a).
Claims 1–8, 13, and 20 stand rejected under 35 U.S.C. § 102(a)(1)/(2)
as anticipated by Song.3
Claims 9–11 stand rejected under 35 U.S.C. § 103 as unpatentable
over Song.

3 Song et al., US 8,147,814 B2, issued Apr. 3, 2012.
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Claims 14–16 stand rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Song and Midha.4
Claims 19 and 21 stand rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Song and Kim.5

WRITTEN DESCRIPTION:
ISSUE
Does the preponderance of evidence on this record support
Examiner’s finding that Appellant’s Specification fails to provide written
descriptive support for the claimed invention?
ANALYSIS
Appellant’s claim 1, reproduced above, requires, inter alia, that the
coloring agent, which comprises an anion coloring agent, and resin of
Appellant’s claimed bodypainting are solved in the solvent as a liquid.
Appellant discloses:
The bodypainting ink according to the present exemplary
embodiment contains a resin constituted of a cation monomer.
Here, the “resin constituted of a cation monomer” is to be
understood to mean a resin constituted by polymerizing cation
monomers, or a resin constituted by co-polymerizing a cation
monomer and another monomer. With this configuration, an
anion constituting an anion coloring agent that is easily soluble
to water can be firmly bonded to a cation of the cation
monomer that constitutes the resin. In addition, the resin
constituted of the cation monomer firmly adheres to the skin

4 Midha et al., US 6,113,883, issued Sept. 5, 2000.
5 Kim et al., US 5,356,438, issued Oct. 18, 1994.
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and thus a bodypainting ink in which a coloring agent hardly
comes off the skin can be obtained.
(Spec. ¶ 12; see also id. ¶ 11 (Appellant discloses that its bodypainting ink
“contains a coloring agent, a solvent, and a resin. The body painting ink
according to the present exemplary embodiment includes an anion coloring
agent as the coloring agent. An anion coloring agent is easily soluble in
water”); id. ¶ 21 (Appellant discloses that the “anion coloring agent . . . is
easily soluble to water”); id. ¶ 23 (Appellant discloses that the “anion
coloring agent is especially markedly separated from the bodypainting ink
by thin-layer chromatography”).)
Appellant’s Specification, thus, makes clear that an anion coloring
agent is soluble in water. The coloring agent of Appellant’s claim 1,
however, is not limited to an anion coloring agent, but instead comprises an
anion coloring agent. Further, Appellant’s Specification does not address
the solubility of the resin component of the ink (see Spec. ¶¶ 11–12, 21).
On this record, Examiner finds that Appellant’s originally filed
Specification fails to provide written descriptive support for the requirement
in Appellant’s claim 1 that “the coloring agent and the resin are solved in the
solvent as a liquid” (Ans. 3 (quoting Appellant’s claim 1)). In addition,
Examiner finds that the term “solved” is not defined in Appellant’s
Specification. Specifically, Examiner finds that Appellant’s Specification
“does not discuss the coloring agent or the resin being ‘solved’,” “[i]n fact,
the term ‘solved’ is not disclosed or used in the specification,” and “the state
of the resin and the coloring agent is not stated by the specification (such as
dissolved, solvated, or dispersed)” (id. at 3–4).
On this record, Examiner set out a prima facie case by explaining
what is missing from Appellant’s disclosure. See Hyatt v. Dudas, 492 F.3d
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1365, 1370 (Fed. Cir. 2007) (“When no such description can be found in the
specification, the only thing the PTO can reasonably be expected to do is to
point out its nonexistence.”). “The burden was then properly shifted to [the
applicant] to cite to the examiner where adequate written description could
be found, or to make an amendment to address the deficiency.” Id. at 1371.
For the foregoing reasons, we are not persuaded by Appellant’s
contention that its Specification discloses that “an anion coloring agent . . . is
easily soluble to water” and capable of being separated from the
bodypainting ink by thin-layer chromatography or high performance liquid
chromatography (HPLC) (Appeal Br. 4–6 (citing Spec. ¶¶ 11, 18, 21, 23,
24); see also Reply Br. 2–4).
Appellant’s citation of the Oxford Learner’s Dictionary6 for the
definition of the term “ink,” “solvent,” “anion,” and “cation” fails to make
up for the foregoing deficiency in Appellant’s Specification (see Appeal Br.
5; cf. Ans. 9 (Examiner finds that Appellant’s contentions regarding the
meaning of the foregoing terms is not persuasive on this record).
Appellant discloses:
The solvent contained in the bodypainting ink according
to the present exemplary embodiment includes water and an
alcohol. With this constitution, inhibition, by water, of bonding
between an anion coloring agent that is easily soluble to water
and the above-mentioned cation monomer can be more
effectively suppressed in comparison with a case where the
solvent is constituted only of water.
(Spec. ¶ 21.) Although paragraph 21 of Appellant’s Specification discloses
that an anion coloring agent is easily soluble in water, this paragraph does

6 Appellant states that this dictionary is available at
“URL=https://www.oxfordlearnersdictionaries.com/”
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not address the solubility of the resin (see id.). Therefore, we are not
persuaded by Appellant’s reliance on paragraph 21 of its Specification to
support a contention that the coloring agent, which may comprise an anion
coloring agent, and resin “are dissolved into the solvent” (Appeal Br. 6).
We recognize that Appellant’s Specification discloses that the
bodypainting ink may be stirred (see Spec. ¶ 23). Appellant failed, however,
to establish that stirring the ingredients of the bodypainting ink necessarily
results in solubilizing the coloring agent, which may comprise an anion
coloring agent, and a resin (cf. Appeal Br. 4–5; Reply Br. 1). We further
find no disclosure of the word “liquid” in paragraph 23 of Appellant’s
Specification, therefore, we are not persuaded by Appellant’s contention that
“the condition of the ink ‘as stirring facilitates the bonding and the other
properties’ is disclosed in the original specification. The condition of the ink
is referred as the ‘liquid’” (Reply Br. 1–2).
In addition, we find that the term “liquid,” appears once in
Appellant’s Specification as part of the phrase “high performance liquid
chromatography (HPLC),” which fails to disclose whether a coloring agent,
comprising an anion coloring agent, and a resin are soluble in solvent (see
Spec. ¶ 24). Further, in the context of HPLC, we agree with Examiner’s
reasoning that Appellant’s Specification does not exclude a filtering step
prior to HPLC (Ans. 9). Thus, we are not persuaded by Appellant’s
contention that a disclosure of HPLC supports their claimed invention
because HPLC “can be used only for measuring . . . [a] liquid” (Appeal Br.
5; see also Reply Br. 1–2).
For the foregoing reasons, we are not persuaded by Appellant’s
contention that its originally filed Specification “does indeed demonstrate
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complete possession of the claimed invention, and no new matter was added
in the Amendment filed on May 27, 2020” (Appeal Br. 6 (emphasis
omitted); see also Reply Br. 4–5).
CONCLUSION
The preponderance of evidence on this record supports Examiner’s
finding that Appellant’s Specification fails to provide written descriptive
support for the claimed invention. The rejection of claim 1 under the written
description provision of 35 U.S.C. § 112(a) is affirmed. Claims 2–11, 13–
16, and 19–21 are not separately argued and fall with claim 1.

DEFINITENESS:
ISSUE
Does the preponderance of evidence support Examiner’s conclusion
that Appellant’s claim 1 is indefinite?
ANALYSIS
Examiner finds, as discussed above, that the bodypainting ink of
Appellant’s claim 1 requires, inter alia, “that the coloring agent and the resin
are ‘solved’ in the solvent as a liquid” (Ans. 4). Examiner further finds that
the term “solved” is unclear on this record (id.). As Examiner explains:
Dissolved and solvated are both ways in which a material may
be in a solvent and dispersed therein, and it is unclear which of
these two (or another altogether definition) is being employed,
especially in light of the absence of any disclosure in
[Appellant’s Specification] . . . from which to interpret the
term.
(Ans. 4; see id. (Examiner finds that “[t]he term ‘solved’ is not an art
recognized term on its own, and neither of the (likely) related terms of
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solvation and dissolution are synonyms for this limitation, and thus it is
unclear what the scope of the claim is”).)
A claim fails to comply with 35 U.S.C. § 112(b) “when it contains
words or phrases whose meaning is unclear.” In re Packard, 751 F.3d 1307,
1310, 1314 (Fed. Cir. 2014). For the reasons set forth above, we find no
error in Examiner’s conclusion that Appellant’s claim 1 is indefinite. “It is
the applicants’ burden to precisely define the invention, not the PTO’s.” In
re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). “[T]his section puts the
burden of precise claim drafting squarely on the applicant.” Id.
Appellant’s arguments are substantially the same as those set for the
with respect to the rejection under 35 U.S.C. § 112(a) (see Appeal Br. 7
(citing Spec. ¶¶ 11, 18, 21, 23, 24); Oxford Learner’s Dictionary; see also
Reply Br. 5–7; cf. Ans. 9–10 (Examiner finds that Appellant’s arguments are
substantially the same as those set forth with respect to the rejection under
35 U.S.C. § 112(a))). We are not persuaded for the reasons set forth above.
CONCLUSION
The preponderance of evidence supports Examiner’s conclusion that
Appellant’s claim 1 is indefinite. The rejection of claim 1 under 35 U.S.C.
§ 112(b) is affirmed. Claims 2–11, 13–16, and 19–21 are not separately
argued and fall with claim 1.

ANTICIPATION/OBVIOUSNESS:
Having found Appellant’s claims indefinite, we reverse, pro forma,
the prior art rejections on this record. See Ex parte Miyazaki, 89 USPQ2d
1207, 1217-18 (BPAI 2008) (precedential) (prior art rejections of indefinite
claims reversed by Board “pro forma” where claim interpretation required
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resort to “speculative assumptions as to the meaning of the claims”); accord,
In re Steele, 305 F.2d 859, 863 (CCPA 1962).7
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–11,
13–16,
19–21
112(a) Written
Description
1–11,
13–16,
19–21

1–11,
13–16,
19–21
112(b) Indefiniteness 1–11,
13–16,
19–21

1–8, 13, 20 102(a)(1)/(2) Song 1–8, 13,
20
9–11 103 Song 9–11
14–16 103 Song, Midha 14–16
19, 21 103 Song, Kim 19, 21
Overall
Outcome
1–11,
13–16,
19–21

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2019).

AFFIRMED

7 The decision to reverse pro forma is based solely on the indefiniteness of
the claimed subject matter and does not address the merits of the evidence
applied in support of the prior art rejections. Should prosecution resume and
the 35 U.S.C. §§ 112(a) and 112(b) issues are resolved, Examiner should
consider whether the prior art rejections are applicable as presented on this
record or with other prior art.