Merck Patent GmbH

Patent Trials and Appeals Board

Apr 27, 2021

2020002968 (P.T.A.B. Apr. 27, 2021)

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.
14/333,608 07/17/2014 Sylke KLEIN MERCK-4212 5690
23599 7590 04/27/2021
MILLEN, WHITE, ZELANO & BRANIGAN, P.C.
2200 CLARENDON BLVD.
SUITE 1400
ARLINGTON, VA 22201
EXAMINER
YOUNG, MICAH PAUL
ART UNIT PAPER NUMBER
1618
NOTIFICATION DATE DELIVERY MODE
04/27/2021 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):
docketing@mwzb.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_________________

Ex parte SYLKE KLEIN, LILIA HEIDER,
CARSTEN LORENZ, and SABINE SCHOEN
_________________

Appeal 2020-002968
Application 14/333,608
Technology Center 1600
_________________

Before JASON V. MORGAN, DEBORAH KATZ, and
JOHN E. SCHNEIDER, Administrative Patent Judges.

KATZ, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review,2 under 35 U.S.C. § 134(a), of the
Examiner’s decision to reject claims 1–17. We have jurisdiction under 35
U.S.C. § 6(b). We AFFIRM.

1 We use the word “Appellant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party-in-interest as Merck Patent GmbH. (Appeal Br. 1.)
2 We consider the Final Office Action issued January, 25, 2019 (“Final
Act.”), the Appeal Brief filed September 25, 2019 (“Appeal Br.”), the
Examiner’s Answer issued on January, 10, 2020 (“Ans.”) and the Reply
Brief filed March 10, 2020 (“Reply Br.”) in reaching our decision.

Appeal 2020-002968
Application 14/333,608

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Appellant’s Specification is directed to a pigment mixture based on
spherical particles and to their use, including in cosmetics and paints. (Spec.
1.)
Appellant’s claim 1 recites:
A pigment mixture comprising at least two components
A and B:
-component A is spherical base particles having a
particle-size distribution D90 of uncoated particles of 0.5 -
15 µm, said particles being completely covered on their surface
by a coating firstly with TiO2 and subsequently with SiO2,
and
-component B is spherical base particles having a
particle-size distribution D90 of uncoated particles of 0.5 -
15 µm, said particles being completely covered on the surface
by a coating firstly with TiO2 and subsequently with iron oxide
or with a mixture of TiO2 and iron oxide.
(Appeal Br. 5.).
The Examiner rejects claims 1–17 under 35 U.S.C. § 103(a) over
Nishikata,3 Anselmann (translation),4 and Schmidt.5 (See Final Act. 2–4;
Appeal Br. 2). Appellant does not argue for the separate patentability of any
of the rejected claims. We focus on claim 1 in our review. See 37 C.F.R.
§ 41.37(c)(1)(iv).

3 Nishikata and Nishimura, U.S. Patent Application Publication 2003/
0035883 A1, published February 20, 2003.
4 Anselmann, Chinese Patent Application Publication 1318092A, published
October 17, 2001 (translation).
5 Schmidt et al., U.S. Patent Application Publication 2011/0104220 A1,
published May 5, 2011.

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Findings of Fact
1. Nishikata is directed to coated powder particles for use in
cosmetics or paints. (See Nishikata, Abstr.)
2. Nishikata teaches making pigment particles that comprise
spherical base particles of silica sized from 0.8 to 0.55 µm. (See Nishikata
¶ 18; see Final Act. 3
3. Nishikata teaches that the silica base particles can be coated
with titanium first and then with silica. (See Nishikata ¶ 18; see Final Act.
3.)
4. Nishikata discloses the cores are submerged and, thus, are
completely covered in coating materials. (See Nishikata ¶ 20; see Final Act.
3.)
5. Nishikata teaches cosmetics that are a blend of coated particles.
(See Nishikata 4, claim 5; see Ans. 6.)
6. Anselmann (translation) teaches a pigment mixture formulation
with two components: component A, comprising spherical silica particles
less than 50 µm in diameter coated with a layer of titanium oxide and a layer
of silica, and component B, comprising spherical silica particles with
diameters less than 50 µm and coated with a first layer of titanium oxide
followed by a layer of iron oxide. (See Anselmann 1, ll. 27–32; see Final
Act. 3.)
7. Anselmann (translation) teaches that the diameters of the
spherical silica used for the compositions disclosed are not uniform, but
have a particle size with a distribution pattern. (See Anselmann 2, ll. 46–48;
see Final Act. 3.)
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8. Anselmann (translation) teaches that the particles suitable for
use as raw material for the compositions disclosed can have a particle
diameter size distribution with 99% of the particles below 50 µm,
preferably, 95% of the particles below 35 µm, particularly preferred where
90% of the particles are below 20 µm. (See Anselmann 2, ll. 46–48; see
Final Act. 3.)
9. Anselmann (translation) discloses the composition is useful as a
pigment in cosmetics, paints, tints, printing inks and other materials. (See,
e.g., Anselmann 3, ll. 108–110; see Final Act. 3.)
10. Schmidt teaches micro-spherical pigment formulations with a
core coated first with a metal oxide and then with a silica or other metal
oxide. (See Schmidt, Abstr., ¶¶ 42–43; see Final Act. 4.)
11. Schmidt teaches that the pigments can be combined with other
pigments and can be applied into a cosmetic composition with a good skin
feel. (See Schmidt ¶¶ 85–86; see Final Act. 4.)
Analysis
We agree with the Examiner that it would have been obvious to those
of ordinary skill in the art at the time to combine the teachings of Nishikata,
Anselmann, and Schmidt to arrive at the pigment mixture recited in
Appellant’s claim 1 because the references demonstrate that base particles
completely coated in several layers, such as TiO2, SiO2, and iron oxides,
were known to be combined to make cosmetics. (See Final Act. 4; see FFs
1, 3–6, 9–11.) We also agree with the Examiner that it would have been
obvious to use routine optimization methods to obtain the general conditions
of concentrations, ratios, and sizes of the particles recited in the pigment
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mixture of claim 1. (See Final Act. 4; see Ans. 6.) In addition, we note that
Anselmann teaches that particle sizes can be expressed a size distribution
and that pigment compositions can include particles of size distribution with
90% of the particles below 20 µm. (See FFs 7, 8.)
Appellant’s main argument is that the prior art teaches particle size
ranges, but does not teach a particle size distribution range of D90 from 0.5–
15 µm, as required in claim 1. (See Appeal Br. 3.) Appellant asserts that
a particle size range is not equivalent to a particle size
distribution (e.g., a D90). The D90 value indicates the maximum
particle diameter, determined by means of laser diffraction, of
90% by vol. of the particles; i.e., 90% by volume of the
particles have a diameter of the D90 value, or less.
(Appeal Br. 3.) Appellant argues that Nishikata provides for particle sizes in
its examples, but does not explain the “importance of the D90 value.” (Id.;
see also Reply Br. 2 (arguing that the Nishikata examples teach only very
small particles).) Appellant argues further that Schmidt also fails to teach a
D90 for any of the materials disclosed. (See id. at 3.)
We agree with Appellant that D90 as defined in the Specification
indicates the maximum particle diameter of 90% by volume of the particles,
not an absolute range of particle sizes. (See Spec. 6:15–17.) Nevertheless,
we are not persuaded that the difference between expressing component
particles as having a particle size range and as having a particle size
distribution range renders Appellant’s claimed pigment mixture nonobvious.
Contrary to Appellant’s argument, Anselmann teaches pigment
compositions with the particle size having a distribution pattern, including a
particularly preferred embodiment wherein 90% of the particles are below
20 microns. (See FF 8; see Anselmann ll. 46–48; see Final Act. 3; contra
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Appeal Br. 3–4.) Thus, not only does Anselmann teach that particles can
have a characteristic of D90 size distribution pattern, Anselmann also teaches
a D90 range that overlaps with the range of particle-size distribution D90 of
0.5–15 µm recited in Appellant’s claim 1.
To the extent that the specific particle size distribution range taught in
Anselmann does not teach the range of 0.5–15 µm recited in claim 1, we
agree with the Examiner that one of ordinary skill in the art could have
obtained the claimed range by routine optimization. (See Ans. 6.) As taught
in Nishikata, particle size has an effect on the ease of handling pigments
used in cosmetics or paints, indicating that size is a result effective variable.
(See Nishikata ¶ 12.) Because particle size distribution is a way of
characterizing particle size, Nishikata teaches that it is a result effective
variable effecting the ease of handling these particles.
Appellant argues that the Examiner fails to provide any evidence why
the particle size distribution would be the result of routine optimization.
(See Reply Br. 3–4.) According to Appellant, there are thousands of
possibilities of particle size distribution in combination with particle
diameter and the overall composition of the pigments and particle size is
dependent on the shape of the particle. (See id.) This argument is not
persuasive because the presence of many options does not indicate that a
characteristic would not have been obvious to optimize. Appellant does not
argue, with supporting evidence, that optimization would have been outside
the skill of the ordinarily skilled artisan because of the number of options or
for any other reason. Given the teaching in Anselmann of particles with
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90% below 20 µm, we are persuaded that optimization would have been
obvious. (See Anselmann 2, ll. 46–48; see Final Act. 3.)
Appellant’s arguments regarding the particle size distribution do not
persuade us that the Examiner erred.
Appellant’s argument that one of ordinary skill in the art would not
have combined the teachings of Nishikata and Schmidt because the
combination does not teach the use of two different spherical particles
simultaneously is also unpersuasive. (See Appeal Br. 3.) Nishikata teaches
a blend of coated powder based on a spherical shaped core. (See Nishikata
4, claim 5; see Ans. 6.) Thus, Nishikata demonstrates that combining
particles would have been obvious. Furthermore, each of the cited prior art
references teaches pigment particles that can be used as cosmetics—the
same purpose. (See FFs 1, 9, 11.) “It is prima facie obvious to combine two
compositions each of which is taught by the prior art to be useful for the
same purpose, in order to form a third composition which is to be used for
the very same purpose.” In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980).
Appellant’s arguments regarding the combination of references do not
persuade us that the Examiner erred.
Appellant argues that an “advantageous hue” can be obtain with the
pigment mixture recited in claim 1, in contrast to that obtained in
“Anselmann (US 2003/0082123 Al).” (See Appeal Br. 4; see Reply Br. 2–
3.) Specifically, Appellant argues that depending on the amount of
component B, as well as the calcination temperature, the pigment mixture
recited in claim 1 can produce hues from apricot to yellowish/white, whereas
the pigments of Anselmann (US 2003/0082123 Al) are taught to be wool-
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white after calcination. (See Appeal Br. 4; see Reply Br. 2–3.) To the
extent Appellant is referring to the Anselmann reference cited by the
Examiner as prior art in the pending rejection, we are not persuaded by this
argument. None of Appellant’s claims recite a specific hue. Thus, the prior
art need not render a pigment mixture with an apricot to yellow/white hue
obvious for us to affirm the Examiner’s rejection. Furthermore, to the extent
Appellant argues this hue would have been an unexpected result, we are not
persuaded because Appellant does not direct us to evidence one of ordinary
skill would have considered it unexpected or that the result would have been
commensurate with the scope of every embodiment of component B,
including all concentrations, encompassed by claim 1.
In the Reply Brief, Appellant argues that because
Anselmann and Schmidt have different objectives and methods
of achieving these objectives as noted above, it is not possible
to combine the teachings of Anselmann and Schmidt with the
intent to produce a coated pigment particles showing a
particular hue as there is simply no reasonable expectation of
success in view of their different methods.
(See Reply Br. 3.) Because an argument based on a lack of reasonable
expectation of success was not raised in the Appeal Brief and good cause
was not shown why we should consider it in the Reply Brief, this argument
is not timely and we need not address it. See 37 C.F.R. § 41.41(b)(2) (“Any
argument raised in the reply brief which was not raised in the appeal brief, or
is not responsive to an argument raised in the examiner's answer, including
any designated new ground of rejection, will not be considered by the Board
for purposes of the present appeal, unless good cause is shown.”). Even if it
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had been presented properly, we would not have been persuaded because
Appellant’s pending claims are not limited to any hue.
Appellant fails to persuade us that the Examiner erred in rejecting
claim 1 over the teachings of Nishikata, Anselmann, and Schmidt.
Appellant does not present separate arguments for the rejection of dependent
claims 2–17. Accordingly, we are not persuaded that the Examiner erred in
rejecting any of Appellant’s claims 1–17.

Conclusion
Upon consideration of the record and for the reasons given, we affirm
the Examiner’s rejection.

In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–17 103 Nishikata,
Anselmann
(translation),
Schmidt
1–17

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
AFFIRMED