Ex Parte McClanahan et alDownload PDFBoard of Patent Appeals and InterferencesFeb 22, 201211954281 (B.P.A.I. Feb. 22, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/954,281 12/12/2007 CRAIG J. McCLANAHAN PF2063005831 3670 78652 7590 02/22/2012 HOWARD & HOWARD ATTORNEYS PLLC BASF CORPORATION 450 West Fourth Street Royal Oak, MI 48067 EXAMINER JANCA, ANDREW JOSEPH ART UNIT PAPER NUMBER 1774 MAIL DATE DELIVERY MODE 02/22/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte CRAIG J. MCCLANAHAN, JIM P. SOSS and SCOTT A. HARTFORD ____________ Appeal 2011-002031 Application 11/954,281 Technology Center 1700 ____________ Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN and RAE LYNN P. GUEST, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-002031 Application 11/954,281 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 1 through 21. We have jurisdiction under 35 U.S.C. § 6. Appellants’ claimed invention relates to a method of determining a paint formula to match the paint coating a surface of an object. App. Br. 2. Claim 1 is illustrative: 1. A method of determining a paint formula to match paint coating a surface of an object and including an effect pigment utilizing a computerized system, said method comprising: measuring a color of the paint using a spectrophotometer; determining a list of paint formulas based on the measured color; providing a coarseness gauge exhibiting differing levels of coarseness of the effect pigment; disposing the coarseness gauge adjacent to the coated surface of the object; comparing the coarseness gauge and the effect pigment of the paint to determine a coarseness of the effect pigment of the paint; selecting the paint formula from the list of paint formulas based on the coarseness of the effect pigment; and communicating the paint formula such that paint may be mixed in accordance with the paint formula. The Examiner relied on the following references in rejecting the appealed subject matter: Wotzka et al. US 5,452,081 September 19, 1995 McClanahan US 6,714,924 B1 March 30, 2004 Rodrigues et al. US 2005/0128484 A1 June 16, 2005 Appeal 2011-002031 Application 11/954,281 3 Appellants request review of the following rejections (App. Br. 6) from the Examiner’s final office action: 1. Claims 1-9, 11-18 and 21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Rodrigues and Wotzka. 2. Claims 10, 19 and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Rodrigues, Wotzka and McClanahan. OPINION The Prior Art Rejections The dispositive issue for this appeal is: Did the Examiner err in determining that the combination of Rodrigues and Wotzka would have led one skilled in the art to a method of determining a paint formula to match the paint coating of a surface of an object by providing a coarseness gauge exhibiting differing levels of coarseness of the effect pigment and disposing the coarseness gauge adjacent to the coated surface of the object as required by the subject matter of independent claim 1? 1 After thorough review of the respective positions provided by Appellants and the Examiner, we answer this question in the negative and AFFIRM. We refer to the Examiner’s Answer for a statement of the Examiner’s rejection (Ans. 3-6) and add any additional findings of fact appearing below for emphasis. 1 Appellants argue independent claims 1 and 12 together as a group, referencing the particular language of claim 1. App. Br. 8. Appellants have not advanced separate, substantive arguments against any of the dependent claims including the separate rejection of claims 10, 19, and 20. App. Br. 11-12. Accordingly, the claims stand or fall together with independent claim 1. Appeal 2011-002031 Application 11/954,281 4 The Examiner found that Rodrigues teaches a method of determining a paint formula similar to Appellants’ claimed invention, including gauging the coarseness of the paint on the surface of the object, with the distinction being that Rodrigues does not teach a coarseness gauge that can be disposed adjacent to the coated surface of the object. Id. at 3-4. The Examiner also found that Wotzka teaches a method of measuring the characteristics of the paint on a coated surface, including measuring the coarseness, by disposing a gauge adjacent to the coated surface of the object. Id. at 4. The Examiner concluded that it would have been obvious to one skilled in the art to use Wotzka’s gauge in the method of Rodrigues to measure the coarseness of the paint to be matched and provide a more accurate representation of the color and physical characteristics of this paint. Id. at 5-6. We find no error in the Examiner’s reasoning that the combination of Rodrigues and Wotzka would have led one skilled in the art to a method of determining a paint formula to match the paint coating of a surface of an object by providing a coarseness gauge and disposing the guage adjacent to the coated surface of the object as required by the subject matter of independent claim 1. In this instance, we find that the Examiner has made a prima facie case of obviousness by providing a sound basis for using the gauge of Wotzka in the method of Rodrigues to allow direct comparison by the human eye, which can be more accurate than automated methods. Id. In doing so, the Examiner has properly shifted the burden to Appellants to rebut the Examiner’s position that the combination of Rodrigues and Wotzka leads one skilled in the art to the claimed invention. Appellants’ arguments primarily address Rodrigues and do not consider what the combined teaching of the prior art would have suggested to the skiled artisan. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (the test for obviousness is what the combined teachings of the references would have suggested to one of Appeal 2011-002031 Application 11/954,281 5 ordinary skill in the art). Appellants have not adequately explained why the Examiner’s rationale is untenable when both references identify coarseness as a characteristic of the texture and finish of a paint or coating. Moreover, Rodrigues discloses that viewing the appearance characteristics of the actual object (vehicle) can be used as a basis for making a selection of the best match for the coating. Rodrigues ¶ [0040]. A person of ordinary skill in the art would have reasonably expected that Wotzka’s gauge would have been useful in viewing the appearance characteristics of the actual object in the invention of Rodrigues. Doing so would have been no more than the predictable use of Wotzka’s gauge according to its established function of identifying coarseness as a characteristic of a paint or coating. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (The question to be asked is “whether the improvement is more than the predictable use of prior art elements according to their established functions.”). Accordingly, we sustain the Examiner’s rejection of claims 1-9, 11-18 and 21 under 35 U.S.C. § 103(a) as unpatentable over Rodrigues and Wotzka. Since Appellants rely on the same arguments discussed above to address the rejection of claims 10, 19 and 20 under 35 U.S.C. § 103(a) as being unpatentable over Rodrigues, Wotzka and McClanahan (App. Br. 12), we also sustain this rejection for the same reasons. ORDER The rejection of claims 1-9, 11-18 and 21 under 35 U.S.C. § 103(a) as unpatentable over Rodrigues and Wotzka is affirmed. The rejection of claims 10, 19 and 20 under 35 U.S.C. § 103(a) as unpatentable over Rodrigues, Wotzka and McClanahan is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136. Appeal 2011-002031 Application 11/954,281 6 AFFIRMED bar Copy with citationCopy as parenthetical citation