Ex Parte 6,872,422 B2 et al

Board of Patent Appeals and Interferences

Feb 12, 2009

90008432 (B.P.A.I. Feb. 12, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SAMIR GUPTA
and MANUJ GOYAL,
Appellants
____________

Appeal 2009-1085
Reexamination Control 90/008,432
Patent 6,872,422 B2
Technology Center 3900
____________

Decided:1 February 13, 2009
____________

Before TERRY J. OWENS, CAROL A. SPIEGEL, and ROMULO H.
DELMENDO, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
Patent Owners (Appellants) appeal under 35 U.S.C. §§ 134(b) and
306 from a final rejection of claims 1-28 (Appeal Brief filed May 9, 2008,
hereinafter “Br.”; Final Office Action mailed January 14, 2008). We have
jurisdiction under 35 U.S.C. §§ 134(b) and 306. We REVERSE.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-1085
Reexamination Control 90/008,432
Patent 6,872,422 B2

2
STATEMENT OF THE CASE
This reexamination proceeding arose from a request for ex parte
reexamination filed by a third party (Greenberg Traurig LLP of Santa
Monica, CA) on February 26, 2007, of United States Patent 6,872,422 B2
(hereinafter the “‘422 Patent”), entitled “PROCESS FOR IMPARTING
AND ENHANCEMENT OF COLOURS IN GEMSTONE MINERALS
AND GEMSTONE MINERALS OBTAINED THEREBY” and issued to
Samir Gupta and Manuj Goyal on March 29, 2005.
Appellants’ invention relates to a process for imparting colors to
gemstone comprising coating the gemstone with one or more color inducing
or enhancing materials in the form of a thin film and then heat treating the
coated gemstone under specified conditions (col. 1, ll. 8-10; col. 11, ll. 2-9).
Claim 1, the sole independent claim on appeal, reads as follows:
1. A process for imparting color to a gemstone, the
process comprising coating the gemstone with one or more
color inducing/enhancing materials in the form of a thin film
and subjecting the coated gemstone to heat treatment at a
temperature in the range of about 700.degree. C. up to about
1200.degree. C. for a time in the range of about 30 minutes to
about 10 hours in air or an oxidizing atmosphere to obtain a
colored gemstone. [App. Br., Claims App’x, pg. 15].
The Examiner relied upon the following as evidence of
unpatentability:
Starcke, et. al. (“Starcke”) 5,853,826 C1 Dec. 29, 1998
Pollak 5,888,918 Mar. 30, 1999
(Pollak ‘918)
Pollak 6,376,031 B1 Apr. 23, 2002
(Pollak ‘031)
Appeal 2009-1085
Reexamination Control 90/008,432
Patent 6,872,422 B2

3
The Examiner rejected claims 1-28 under 35 U.S.C. § 103(a) as
unpatentable over Pollak ‘918 in view of Pollak ‘031 and Starcke
(Examiner’s Answer mailed May 14, 2008, hereinafter “Ans.,” 4-6).
The Examiner finds that Pollak ‘918 teaches a method of enhancing
the color of gemstones comprising subjecting a combination of a gemstone
and at least one powdered form of cobalt metal or cobalt oxide to a
temperature in the range of about 900°C to about 1,250°C for a time in the
range of about 3 to about 200 hours (Ans. 4). The Examiner acknowledges,
however, that Pollak ‘918 differs from the subject matter of appealed claim 1
in that “the gemstone is contacted with a finely divided treating agent as
opposed to the claimed thin film” (Ans. 5). In an attempt to account for this
difference, the Examiner relies on the teachings of Starcke, which is
characterized as “teach[ing] a process for enhancing the appearance of
objects such as gemstones by coating the objects with thin film coatings”
(id.). The Examiner then concludes that “the hypothetical person having
ordinary skill in the art would have arrived at the process for imparting color
to a gemstone defined by claims 1-28 with a reasonable expectation of
improving the contact between the gemstone and the treating agent as a well
as a method for imparting different colors or shades of the same color within
the same treated gemstone[]” (Ans. 6).
Appellants, on the other hand, contend that the Examiner’s rejection is
in error because “it was previously unknown that the application of color
inducing/enhancing materials in the form of a thin film in combination with
subjecting the coated gemstone to heat treatment between 700 and 1200
Celsius for between 30 minutes to 10 hours would have the desired result[]”
Appeal 2009-1085
Reexamination Control 90/008,432
Patent 6,872,422 B2

4
(Br. 12). According to Appellants, “the use of a thin film in combination
with subjecting the coated gemstone to heat treatment between 700 and 1200
Celsius for between 30 minutes to 10 hours is not simply a predictable use of
a prior art element[]” (id.).

ISSUE
Thus, the sole issue arising from the respective positions of the
Examiner and Appellants is:
Have Appellants shown that the Examiner erred in concluding that a
person of ordinary skill in the art would have been led to modify the method
described in Pollak ‘918 to include subjecting a gemstone coated with a thin
film as shown in Starcke to relatively high temperatures as recited in
appealed claim 1?

FINDINGS OF FACT
1. Pollak ‘918 describes a method for enhancing the color of
gemstones comprising subjecting a combination of gemstone
and at least one powdered (i.e., finely divided) form of cobalt
metal or cobalt oxide to conditions suitable to enhance the color
of the gemstone without causing a significant level of surface
damage to the gemstone (col. 1, ll. 36-43).
2. Pollak ‘918 further teaches that the combination of the
gemstone and the powdered cobalt metal or cobalt oxide is
typically subjected to a temperature in the range of about 900°C
to about 1,250°C (col. 2, ll. 13-20).
Appeal 2009-1085
Reexamination Control 90/008,432
Patent 6,872,422 B2

5
3. Pollak ‘918 states that “[g]enerally . . . higher exposure
temperatures lead to a greater intensity of color being imparted
to the mineral being treated, as well as impacting the degree of
color saturation achieved by the process” (col. 2, ll. 22-25).
4. Pollak ‘918 does not teach “coating the gemstone with one or
more color inducing/enhancing materials in the form of a thin
film” as recited in appealed claim 1.
5. The Examiner did not rely on Pollak ‘031 to resolve the
difference between Pollak ‘918 and claim 1 (Ans. 5).
6. Starcke discloses a method for “altering and enhancing the
appearance of objects such as gemstones by coating the objects
with thin film coatings which provide color via optical
interference for a decorative effect” (col. 1, ll. 8-11).
7. Starcke teaches that the thin film coating is applied at low
temperatures (generally less than about 200°C) “so as to not
affect the gemstone or decorative object other than to coat its
surface” (col. 2, ll. 4-5; col. 4, ll. 45-48, 53-54).
8. Starcke states that “[t]he color of the reflected light changes as
one views the object from a different angle[]” (col. 2, ll. 32-33).
9. Starcke emphasizes the need to “apply a thin (multi-angstrom in
thickness) film coating which does not materially change the
dimension or underlying structure of the substrate” (col. 2, ll.
54-59).
10. Starcke does not teach subjecting the coated gemstone to high
temperatures as specified in claim 1.
Appeal 2009-1085
Reexamination Control 90/008,432
Patent 6,872,422 B2

6
11. Starcke teaches that high temperatures can cause damage to the
gemstone (col. 1, ll. 17-18 and 27-28).

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727,
1734 (2007).
“[W]hen the prior art teaches away from combining certain known
elements, discovery of a successful means of combining them is more likely
to be nonobvious.” KSR, 127 S. Ct. at 1740 (citing United States v. Adams,
383 U.S. 39, 51-52 (1966)).

ANALYSIS
We agree with Appellants that the Examiner erred in concluding that a
person having ordinary skill in the art would have been led to combine the
references in the manner claimed. Contrary to the Examiner’s conclusion
(Ans. 6), the evidence does not indicate that a person having ordinary skill in
the art would have reasonably expected that subjecting a gemstone coated
with a thin film to the high temperatures disclosed in Pollak ‘918 would
have produced a successful result. Unlike Appellants’ claimed method,
Pollak ‘918 teaches subjecting the combination of finely divided cobalt or
cobalt oxide powder and gemstone to high temperatures that overlap with
those recited in claim 1 (Facts 1-4). While Starcke teaches a method for
Appeal 2009-1085
Reexamination Control 90/008,432
Patent 6,872,422 B2

7
obtaining a special visual effect (change of color when viewed from
different angles) by coating the gemstone with a thin film at low
temperatures, it actually discourages one of ordinary skill in the art from
using high temperatures that would alter the structure of the underlying
gemstone (Facts 6-11). Thus, if anything, Starcke would have led a person
having ordinary skill in the art to modify Pollak ‘918 to subject a coated
gemstone to temperatures well below those specified in appealed claim 1.
Adams, 383 U.S. at 51-52.
Because the Examiner did not rely on Pollak ‘031 to account for the
difference between Pollak ‘918 and the subject matter of claim 1 (Fact 5),
we need not address its teachings.

CONCLUSION
On this record, we determine that Appellants have shown reversible
error in the Examiner’s conclusion that a person of ordinary skill in the art
would have been led to modify the method described in Pollak ‘918 to
include subjecting a gemstone coated with a thin film as shown in Starcke to
the relatively high temperatures recited in the appealed claims.

DECISION
The Examiner’s decision to reject appealed claims 1-28 is reversed.
REVERSED

Appeal 2009-1085
Reexamination Control 90/008,432
Patent 6,872,422 B2

8
MAT

FOR PATENT OWNERS:
Cardinal Law Group, LLC
Suite 2000
1603 Orrington Avenue
Evanston, IL 60201

FOR THIRD PARTY REQUESTOR:
Greenberg Traurig LLP
2450 Colorado Avenue
Suite 400E
Santa Monica, CA 90404