Ex Parte Pilz et al

Patent Trials and Appeals Board

Mar 20, 2019

14152138 - (D) (P.T.A.B. Mar. 20, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/152,138 01/10/2014
25297 7590 03/22/2019
Jenkins, Wilson, Taylor & Hunt, P.A.
3015 Carrington Mill Boulevard
Suite 550
Morrisville, NC 27560
FIRST NAMED INVENTOR
Manuela Pilz
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1406/908 CON 5563
EXAMINER
MANGOHIG, THOMAS A
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
03/22/2019 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
following e-mail address(es):
usptomail@jwth.com
datcheson@jwth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MANUELA PILZ and
GUDRUN SCHUBERT
Appeal2018-004526 1
Application 14/152,138
Technology Center 1700
Before JEFFREY T. SMITH, CHRISTOPHER C. KENNEDY, and
DEBRA L. DENNETT, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an Appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-12. We have jurisdiction under 35 U.S.C. § 6.
We affirm.
1 Appellant and the real party in interest is Sigmund Lindner GmbH. (Br. 1.)
Appeal2018-004526
Application 14/152,138
Appellant's invention is generally directed to glitter products that are
physically and/or chemically resistant to impairment. (Spec. ,r 4.) Claim 1
illustrates the subject matter on appeal and is reproduced below:
1. A glitter product comprising a plurality of individual
particles, which are not bonded together, each of the individual
particles having a thickness of 2: 1 µm and each consisting of a
carrier layer of a plastics foil which is
provided on either side with a coating of aluminium and
thereon with a coating of polyurethane or epoxide;
provided with a coating of polyurethane or epoxide on either
side; or
provided with a coating of aluminium on either side,
wherein each of the individual particles is provided on all sides
with a homogeneous protective layer so as to enclose cut or
broken edges on the individual particles.
The Examiner maintains the following rejections from the Final
Office Action for our review:
I. Claims 1-7 and 10-12 rejected under 35 U.S.C. § I03(a) as
obvious over the combination of Craig (US 6,033,464; Mar. 7, 2000)
and Ganapathiappan (US 2008/0257212 Al; Oct. 23, 2008).
II. Claim 4 rejected under 35 U.S.C. § I03(a) as obvious over the
combination of Craig, Ganapathiappan, and Jungnitz (US
2005/0019575 Al; Jan. 27, 2005).
III. Claims 8 and 9 rejected under 35 U.S.C. § I03(a) as obvious over
the combination of Craig, Ganapathiappan, and Schwab (CA
2,005,978; June 21, 1990).
The complete statement of the rejections on appeal appear in the Final
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Appeal2018-004526
Application 14/152,138
Office Action. (Final Act. 3-9.)
OPINION
Appellant presents substantive arguments addressing independent
claim 1. (Br. 2-9.) Appellant contends separately rejected claims 4, 8, and
9 are patentable for the same reasons. (Br. 7.) We will address independent
claim 1 as argued by Appellant. Any claim not separately argued will stand
or fall with its independent claim 1.
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we affirm the Examiner's
rejection for the reasons set forth in the Answer to the Appeal Brief and
Final Office Action appealed from, which we adopt as our own. We
highlight and address specific findings and arguments for emphasis as
follows.
Appellant argues none of the techniques described in the prior art
references provide a glitter product in which each individual particle is
protected on all sides with a homogenous protective layer so as to enclose
cut or broken edges on the individual particles. (Br. 2.) In support of this
argument, Appellant relies on two Declarations ( submitted July 6, 2015 and
December 22, 2015) to establish "that the present glitter product is produced
by a specific method in such a way that the glitters are in an individual form
in the product and provided on all sides with a homogeneous protective
layer." (Br. 3.) Appellant contends the Declarations establish the liquid
phase process outlined in Taylor (US 2005/0250877 Al; Nov. 10, 2005)
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Application 14/152,138
results in agglomerates of individual glitter particles that have to be dried
after the coat. (Br. 3; Declaration filed July 6, 2015, ,r 5.) Appellant argues
the Declarations provided in the present record are relevant to the present
rejection because Ganapathiappan and Taylor both require dispersing the
pigment particles in the aqueous liquid vehicle. (Br. 3.) Appellant further
argues:
When Ganapathiappan' s liquid dispersion is dried, one would
expect that agglomerates will form that, as with Taylor's
agglomerates or any other agglomerates, must be broken to
produce particles that are not bonded together as the present
claims require. However, breaking the agglomerates will
damage the coating such that each individual particle is not
provided on all sides with a homogeneous protective layer, as
the present claims also require.
(Br. 4.)
Appellant argues the provided evidence (Declarations) that drying
particles that are coated in an aqueous solution results in agglomeration and
breaking the agglomerate into individual particles cannot be done without
damaging the coating. (Br. 8.) Appellant argues the Examiner has not given
proper weight to the Declarations which describe glitter produced using the
process described in Taylor.
Appellant's arguments are not persuasive of reversible error. We
adopt the Examiner's responses to Appellant's arguments.
The Examiner has provided an extensive discussion as to why the
Declaration evidence relied upon was not sufficient to overcome the
appealed rejections. (See Final Act.; Answer.) Appellant has not
established that the processes of Ganapathiappan and Taylor are so similar
that the coated particles formed, according to Ganapathiappan, would
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Application 14/152,138
necessarily have the same characteristics as those of Taylor. Moreover,
Ganapathiappan discloses that the process to coat the pigment particles
includes deaggregating and dispersing the pigment particles using standard
processes such as microfluidization, resulting in the produced particles that
are individually coated. (Ganapathiappan ,r 26.)
Appellant argues there was no motivation to modify the glitter within
Craig's marking composites because there is no indication of any difficulty
in incorporating any of the various known glitters. (Br. 5.)
Appellant's argument is not persuasive of reversible error. Craig does
not place a limit on the type of glitter utilized. (Craig col. 8.) Consequently,
a person of ordinary skill in the art would have reasonably expected that the
glitters described by Ganapathiappan would have been suitable for Craig's
marking composition. See, e.g., KSR Int'! Co. v. Teleflex, Inc., 550 US 398,
416 (2007) ("when a patent claims a structure already known in the prior art
that is altered by the mere substitution of one element for another known in
the field, the combination must do more than yield a predictable result"); In
re Siebentritt, 372 F.2d 566, 567-68 (CCPA 1967) (express suggestion to
interchange methods which achieve the same or similar results is not
necessary to establish obviousness); see also In re Kahn, 441 F.3d 977, 985-
88 (Fed. Cir. 2006); In re O'Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988)
("For obviousness under§ 103, all that is required is a reasonable
expectation of success." ( citations omitted)); In re Keller, 642 F.2d 413, 425
( CCP A 19 81) (" [T]he test [ for obviousness] is what the combined teachings
of the references would have suggested to those of ordinary skill in the
art.").
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Application 14/152,138
Consequently, after consideration of Appellant's arguments, we are
unpersuaded of error in the Examiner's determination of obviousness.
Accordingly, we affirm the 35 U.S.C. § 103(a) rejections of claims 1-
12 for the reasons given above and presented by the Examiner.
DECISION
The Examiner's prior art rejections of claims 1-12 are affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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