Debasish Banerjee et al.

Patent Trials and Appeals Board

Jun 30, 2020

2018006753 (P.T.A.B. Jun. 30, 2020)

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.
14/607,933 01/28/2015 Debasish Banerjee TTC-50415/08 6188
63796 7590 06/30/2020
DINSMORE & SHOHL LLP
900 Wilshire Drive
Suite 300
TROY, MI 48084
EXAMINER
CHANG, AUDREY Y
ART UNIT PAPER NUMBER
2872
NOTIFICATION DATE DELIVERY MODE
06/30/2020 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
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PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DEBASISH BANERJEE, SONGTAO WU, KHOA VO, and
ALBERTO ARGOITIA
____________

Appeal 2018-006753
Application 14/607,933
Technology Center 2800
____________

Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
JEFFREY R. SNAY, Administrative Patent Judges.

SNAY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–3, and 5–20. 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 Toyota Jidosha Kabushiki Kaisha and Viavi
Solutions, Inc. as the real parties in interest. Appeal Br. 2.
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Application 14/607,933

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BACKGROUND
The invention relates to multilayer stack structures which exhibit little
or no noticeable color shift when viewed from different angles. Spec. ¶ 2.
Claim 1 reads as follows:
1. A hybrid omnidirectional structural color pigment
comprising:
a multilayer stack having:
a reflector core layer;
a dry deposited high index of refraction (nh) dielectric
layer extending across said reflective core layer, said dry
deposited nh dielectric layer having a thickness between 0.1-2.0
quarter wave thickness for a desired control wavelength;
a dry deposited absorber layer extending across said dry
deposited nh dielectric layer, said reflector core layer, dry
deposited nh dielectric layer and dry deposited absorber layer
being planar layers; and
a wet deposited nh outer oxide layer extending across said
dry deposited absorber layer;
said multilayer stack having a reflection band with a
predetermined full width at half maximum (FWHM) of less than
200 nm and a predetermined color hue shift of less than 30°
when said multilayer stack is exposed to broadband
electromagnetic radiation and viewed from angles between 0
and 45° relative to normal of an outside surface of said
multilayer stack.

Appeal Br. 30 (Claims Appendix) (emphasis added to highlight disputed
recitations). Claim 14 recites a method for making a structural color
pigment that essentially meets the characteristics recited in claim 1. Each
remaining claim on appeal depends from claim 1 or 14.

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Application 14/607,933

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REJECTIONS2
I. Claims 1–3 and 5–20 stand rejected under 35 U.S.C. § 103 as
unpatentable over Bradley,3 Raksha,4 and Argoitia.5
II. Claims 1–3 and 5–20 stand rejected under 35 U.S.C. § 103 as
unpatentable over Argoitia and Bradley.

OPINION
Rejection I: obviousness over Bradley in view of Raksha, and Argoitia
With regard to Rejection I, Appellant argues the claims as a group.
See Appeal Br. 15–18; Reply Br. 2–10. We select claim 1 as representative
of the group. Each of claims 2, 3, and 5–20 stands or falls with claim 1.
Relevant to Appellant’s arguments on appeal, the Examiner finds
Bradley discloses a multilayer interference film which exhibits a single
magenta color that is independent of viewing angle. Final Act. 4 (citing
Bradley 10:20–62). The Examiner finds that Bradley discloses the same
layer materials and thicknesses as are described in the Specification as
suitable for exhibiting a color within the visible spectrum at a full width at
half maximum (FWHM) of less than 200 nm. Id. The Examiner also finds
that Argoitia provides a reason to provide Bradley’s dielectric layer at a
thickness of 1.0 to 2.0 quarter waves (QW) in order to provide non-shifting
color for dielectric materials having a refractive index greater than 2.0. Id.
at 5–6.

2 Rejections under 35 U.S.C. § 112 and nonstatutory double patenting are
withdrawn. Ans. 2–3.
3 US 6,157,489, issued December 5, 2000.
4 US 7,169,472 B2, issued January 30, 2007.
5 US 2003/0190473 A1, published October 9, 2003.
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Application 14/607,933

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Appellant argues the Examiner’s finding that Bradley’s structure
would have exhibited color at a FWHM less than 200 nm is not supported by
evidence. Appeal Br. 13–15; Reply Br. 3–5. Particularly, Appellant
contends only spectral colors within the visible spectrum necessarily exhibit
a FWHM less than 200 nm, and that such spectral colors can only be
produced by emitting sources, not by reflecting white light. Id. at 14.
Appellant argues certain colors, such as silver, gold, and copper, have broad
reflection spectra. Id. at 14–15.
Appellant’s arguments are not persuasive of reversible error. The
Examiner finds, and Appellant does not dispute, that Bradley’s multilayer
structure exhibits a single color. Compare Final Act. 4 (“Bradley et al
teaches explicitly that the multilayer stack having this multilayer
interference structure can be non-shifting single color.”), with Appeal Br.
13–15). The Examiner’s finding is supported by Bradley’s disclosures that
the relied-upon example presents only magenta. Bradley 10:31–32 (“The
formed interference film had nonshifting magenta-to-magenta color
properties.”). Appellant’s argument that silver, gold, and copper have
broader reflection spectra does not address the Examiner’s finding with
regard to Bradley’s disclosure of magenta.6 Moreover, Appellant does not
challenge the Examiner’s finding (Final Act. 4) that Bradley’s disclosed
structure includes “identical layer materials and layer thickness[es] as the
instant application,” such that it would reasonably have been expected to
have the same reflection properties, including a FWHM value of less than

6 Appellant identifies magenta as an achromatic color (Appeal Br. 14), but
presents neither evidence nor argument regarding magenta’s reflection
spectrum.
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200 nm. As such, Appellant has advanced no compelling rationale why the
Examiner’s conclusion is not reasonable. Cf. In re Spada, 911 F.2d 705, 708
(Fed. Cir. 1990) (when a claimed product reasonably appears to be
substantially the same as a product disclosed by the prior art, the burden is
on the applicant to prove the prior art product does not necessarily or
inherently possess characteristics attributed to the claimed product); In re
Best, 562 F.2d 1252, 1255 (CCPA 1977).
Appellant also contends Bradley teaches a dielectric having 4.0
quarter wave thickness, rather than the 0.1–2.0 quarter wave thickness
recited in claim 1. Appeal Br. 16; Reply Br. 8–10. Appellant argues
Argoitia does not suggest a lower dielectric thickness because Argoitia
provides diffractive structures in combination with dielectric layers. Id. at
16–17.
Appellant’s arguments are not persuasive. The Examiner relies on
Argoitia as evidence that one skilled in the art would have known that
achieving non-shifting vs. shifting color in a multilayer structure “can be
controlled” by adjusting the thickness of the dielectric layer. Ans. 13; see
also Argoitia ¶ 57(“The structural differences between interference non-
shifting and color shifting multi-layer structures . . . are typically
characterized by differences in the thickness and refractive index of
dielectric materials within the multilayer structures.”). Argoitia specifies
that “[a] dielectric material with an index of refraction of about 2 or greater
having an optical thickness with a low number of quarter waves (i.e., about
1–2 QW), typically results in a low color shift or no color shift at all.” Id.
Argoitia’s teaching that added diffractive structures can impart additional
color effects, id. ¶ 17 (“The present invention brings together diffractive
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effects in combination with thin film interference effects technology to
create new color effects hitherto not seen before.”), does not negate the
relied-upon disclosure that a non-shifting color may be achieved by
adjusting dielectric thickness, such as providing a 1–2 QW thickness
dielectric having a refractive index of 2 or greater.7
The Examiner’s Rejection I is sustained.

Rejection II: obviousness over Argoitia in view of Bradley
With regard to Rejection II, which relies on the same teachings in
Argoitia and Bradley as are discussed above, Appellant argues Argoitia’s
layers having surface diffractive structures are not “planar” as is recited in
claim 1. However, the Examiner’s rejection relies on the combined
teachings of Argoitia and Bradley, where Bradley provides a reason to form
planar layers in a multilayer interference structure. See Final Act. 13 (citing
Bradley as evidence of a reason to use “the multilayer stack structure taught

7 We note that Bradley also appears to meet the recited dielectric thickness.
Claim 1 recites a dielectric layer “having a thickness between 0.1–2.0
quarter wave thickness for a desired control wavelength.” The Specification
defines “quarter wave thickness” as “one-quarter of the desired control
wavelength, i.e. QW = λcw/4 where λcw is the desired control wavelength.”
Spec. 26–27. Thus, for a 506 nm control wavelength, claim 1 would require
a dielectric layer thickness in the range of (0.1–2.0)*(506 nm/4) or 12.7–253
nm. Bradley provides a dielectric of ZnS having an optical thickness of 4
QWOT at 506 nm. Bradley 10:23–26. Bradley defines QWOT as “4 ηd/λ”
where η is the refractive index of the layer, d is the physical thickness of the
layer, and λ is the wavelength at which a QWOT condition occurs (id. at
4:53–59). Thus, for Bradley’s disclosed optical thickness of 4 QWOT, the
layer’s physical thickness d would be defined by λ/η. Bradley’s ZnS
dielectric has a refractive index of 2.2. Id. at 5:10. Applying Bradley’s
definition of QWOT, the disclosed dielectric layer would have a thickness d
of 506 nm/2.2 or 230 nm, which is within the range of 12.7–253 nm.
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by Argoitia et al to make a non-color shifting multilayer stack without the
diffractive structure”). Appellant’s argument against Argoitia alone does not
demonstrate error in the Examiner’s determination based on the combined
teachings of Argoitia and Bradley. Accordingly, Rejection II also is
sustained.

CONCLUSION
The Examiner’s decision rejecting claims 1–3 and 5–20 is affirmed.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 5–20 103(a) Bradley, Raksha,
Argoitia
1–3, 5–20
1–3, 5–20 103(a) Argoitia, Bradley 1–3, 5–20
Overall
Outcome

1–3, 5–20

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)(iv).

AFFIRMED