Ex Parte McClanahan et al

Board of Patent Appeals and Interferences

Feb 22, 2012

11954281 (B.P.A.I. Feb. 22, 2012)

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

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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
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Application 11/954,281

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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.
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Application 11/954,281

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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
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Application 11/954,281

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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

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AFFIRMED

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