BASF SE

Patent Trials and Appeals Board

May 12, 2021

2020002679 (P.T.A.B. May. 12, 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.
14/905,400 01/15/2016 Andreas HAFNER 074008-1685-US-538157 9964
123223 7590 05/12/2021
Faegre Drinker Biddle & Reath LLP (WM)
Attn: Intellectual Property Group
One Logan Square, Suite 2000
Philadelphia, PA 19103-6996
EXAMINER
KING, GEORGE G
ART UNIT PAPER NUMBER
2872
NOTIFICATION DATE DELIVERY MODE
05/12/2021 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):
DBRIPDocket@faegredrinker.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
Ex parte ANDREAS HARNER, ADRIAN VON MUEHLENEN,
OLIVIER ENGER, BENJAMIN GALLINET,
ROLANDO FERRINI, NENAD MARJANOVIC, MARTIN STALDER,
FABIAN LUETOLF, and GUILLLAUME BASSET
_______________
Appeal 2020-002679
Application 14/905,400
Technology Center 2800
_______________

Before CHRISTOPHER C. KENNEDY, DEBRA L. DENNETT, and
SHELDON M. McGEE, Administrative Patent Judges.

DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 17, 20, 23, 27–30, 33, 36, 37, 39, and

1 In our Decision, we refer to the Specification filed Jan. 15, 2016 (“Spec.”)
of Application 14/905,400 (“the ’400 Application”); the Final Office Action
dated May 23, 2019 (“Final Act.”); the Advisory Action date July 30, 2019
(“Adv. Act.”); the Appeal Brief filed Oct. 21, 2019 (“Appeal Br.”); the
Examiner’s Answer dated Jan. 14, 2020 (“Ans.”); and the Reply Brief filed
Feb. 21, 2020 (“Reply Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies BASF SE as the real party in interest. Appeal Br. 2.
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Application 14/905,400

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40 of Application 14/905,400. See Final Act. 1; Appeal Br. 6. We have
jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
BACKGROUND
The subject matter of the ’400 Application relates to the seasonal
modification of the transmission of solar light through a window into the
interior space of a building or vehicle by a device comprising interrupted
metallic structures on a transparent substrate. Spec. 1, ll. 5–9.
Claim 17 is representative of the ’400 Application’s claims and is
reproduced below:
1. A translucent construction element comprising a layer of
translucent substrate, which contains a surface structured with
nanoplanes of inclined angle relative to the substrate plane, and
coated with an interrupted metallic layer covering at least a part
of said nanoplanes, characterized in that the thickness of the
metallic layer is from the range 1 to 50 nm and the metallic
layer is interrupted in one dimension with a periodicity of
interruptions in the range 50 to 1000 nm and realizes a duty
cycle from the range 0.25 to 0.7;
wherein the metallic layer contains a metal selected from
the group consisting of silver, gold, copper, and platinum;
wherein the metallic layer is covered by a transparent
medium in the form of an encapsulating layer or has an
underlayer, the underlayer comprising an enhancement material
selected from the group consisting of Ti, Cr, Ni, silver oxides,
and PEDOT-PSS is contained between the substrate and the
interrupted metallic layer; or
wherein the metallic layer is covered by a transparent
medium in the form of an encapsulating layer, and has an
underlayer, the underlayer comprising an enhancement material
selected from the group consisting of Ti, Cr, Ni, silver oxides,
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Application 14/905,400

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and PEDOT-PSS is contained between the substrate and the
interrupted metallic layer; and
wherein the translucent construction element or device
permits transmission of at least 10% solar radiation energy in
the range of 400 to 700 nm.
Appeal Br. 13 (Claims App.).
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Name Reference Date
Moskovits et al.
(“Moskovits”)
US 2012/0081703 A1 Apr. 5, 2012
Meng et al.
(“Meng”)
US 2012/0206805 A1 Aug. 16, 2012
REJECTION
The Examiner maintains the rejection of the claims 17, 20, 23, 27–30,
33, 36, 37, 39, and 40 under 35 U.S.C. § 103 as obvious over Meng in view
of Moskovits. Final Act. 4–5; Ans. 4.
DISCUSSION
We review the appealed rejection for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011))
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the [E]xaminer’s rejections.”). After considering the
evidence presented in this Appeal and each of Appellant’s arguments, we are
not persuaded that Appellant identifies reversible error in the Examiner’s
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rejection. Therefore, we affirm the Examiner’s obviousness rejection based
substantially on the fact findings, reasoning, and conclusions set forth in the
Final Office Action and the Examiner’s Answer, which we adopt as our
own. We offer the following for emphasis only.
Appellant argues the pending claims—except for claim 40—as a
group. See Appeal Br. 6–10. We select independent claim 17 as
representative of the group. 37 C.F.R. § 41.37(c)(1)(iv). Claims 20, 23, 27–
30, 33, 36, 37, and 39 stand or fall with claim 17. We address claim 40
separately.
With regard to claim 17 the Examiner finds that Meng teaches the
limitations but does not teach “wherein the metallic layer is covered by a
transparent medium in the form of an encapsulating layer and (or) has an
underlayer . . . .” Final Act. 6. The Examiner relies on Moskovits for
teaching the encapsulating and (or) underlayer limitations.3 Id. at 6. The
Examiner finds that claim 17’s encapsulating layer reads on Moskovits’s
cover glass as protection for the grating structure, and claim 17’s underlayer
reads on Moskovits’s thin chrome sticking layer 402(1)–402(N) to better
hold the interrupted metallic layer. Id. (citing Moskovits Figs. 4 and 19,
¶¶ 82, 148).
Appellant argues that Moskovits is non-analogous art. Appeal Br. 7.

3 Claim 17 includes two limitations relating to an encapsulating layer and an
underlayer. See Appeal Br. 13 (Claims App.). The first such limitation
recites “an encapsulating layer or . . . an underlayer;” the second such
limitation recites “an encapsulating layer and . . . an underlayer.” Id.
(emphases added). Claim 17 recites the first limitation or the second
limitation. Id.
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“Two separate tests define the scope of analogous prior art:
(1) whether the art is from the same field of endeavor, regardless of the
problem addressed and, (2) if the reference is not within the field of the
inventor’s endeavor, whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved.” In re Bigio, 381
F.3d 1320, 1325 (Fed. Cir. 2004) (citing In re Deminski, 796 F.2d 436, 442
(Fed. Cir. 1986) and In re Wood, 599 F.2d 1032, 1036 (CCPA 1979)).
Appellant first argues that Moskovits is not in the same field of
endeavor as the ’400 Application. Id. On this point, we agree with
Appellant.
The field of endeavor test for analogous art “requires the PTO to
determine the appropriate field of endeavor by reference to explanations of
the invention’s subject matter in the patent application, including the
embodiments, function, and structure of the claimed invention.” Bigio, 381
F.3d at 1325–26 (citing Wood, 599 F.2d at 1036 (confining field of endeavor
to the scope explicitly specified in the background of the invention); and
Deminski, 796 F.2d at 442 (determining the cited references were within the
same field of endeavor where they “have essentially the same function and
structure”)). The Examiner does not make a finding as to the ’400
Application’s field of endeavor. See generally Final Act.; Ans. Moskovits’s
field of endeavor is plasmonic devices (see Moskovits (54), ¶ 2), which we
determine is not the same as that of the ’400 Application.
Appellant next argues that Moskovits fails the second test for
analogous art, i.e., it is not reasonably pertinent to the particular problem
faced by the applicant. Appeal Br. 7–9. On this point, we disagree with
Appellant.
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The scope of analogous art is to be construed broadly. Wyers v.
Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (“The Supreme
Court’s decision in KSR International Co. v. Teleflex, Inc., 550 U.S. 398
(2007), directs us to construe the scope of analogous art broadly, stating that
‘familiar items may have obvious uses beyond their primary purposes, and a
person of ordinary skill often will be able to fit the teachings of multiple
patents together like pieces of a puzzle.’ Id. at 402 (emphasis added).”). A
reference is reasonably pertinent if . . . it is one, which because of the matter
with which it deals, logically would have commended itself to an inventor’s
attention in considering his problem. If a reference disclosure has the same
purpose as the claimed invention, the reference relates to the same problem,
and that fact supports use of that reference in an obviousness rejection.
Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir.
2011) (quoting In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992)); see also In
re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (same standard).
A reference need not be reasonably pertinent to every problem facing
a field to be analogous prior art, but rather need only be “reasonably
pertinent to one or more of the particular problems to which the claimed
invention relates.” Donner Tech., LLC v. Pro Stage Gear, LLC, 979 F.3d
1353, 1361 (Fed. Cir. 2020). “Thus, when addressing whether a reference is
analogous art with respect to a claimed invention under a reasonable-
pertinence theory, the problems to which both relate must be identified and
compared.” Id. at 1360. This analysis must be accomplished from the point
of view of one of ordinary skill in the art who is considering turning to the
teachings of references outside her field of endeavor, and who “would thus
not identify the problems so narrowly so as to rule out all such art.” Id.
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(citing Clay, 966 F.2d at 660).
The ’400 Application states that an underlayer may be deposited upon
the grated structure to mediate adhesion of the metal and/or improve the
coating quality of the subsequent metal layer (reduce its roughness), and
materials useful for the underlayer include chromium. Spec. 11, ll. 27–30.
Thus, Applicant faced the problem of mediating adhesion of the metal to the
grated structure. Moskovits solves the same problem of better holding gold,
silver, copper, or platinum (the claimed metallic layer) to a grating with a
thin chrome sticking layer (the claimed underlayer). One of ordinary skill in
the art having identified a need to mediating adhesion of an underlayer
comprising chromium to an interrupted metallic layer consisting of gold,
silver, copper, or platinum would reasonably have looked to Moskovits, as it
is reasonably pertinent to solving the particular problem.
A reference can be analogous art with respect to a patent application
even if there are significant differences between the two. Donner Tech., 979
F.3d at 1361 (“[T]here will frequently be significant differences between a
patent and a reference from a different field of endeavor. But it does not
follow that such a reference is, for that reason alone, not reasonably
pertinent to one or more problems to which the claimed invention relates.”).
Appellant fails to persuade us that Moskovits is non-analogous art.
Appellant’s final argument for patentability of claim 17 is that neither
Meng nor Moskovits teach the claimed duty cycle from the range 0.25 to
0.7. Appeal Br. 9–10. Specifically, Appellant contends that “duty cycle” is
defined in the ’400 Application as the ratio of peak area to the total area.
Spec. 10, ll. 23–24. Meng, on which the Examiner relies for teaching the
claimed duty cycle (Ans. 8), defines duty cycle as the ratio of the grid line
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width to the pitch (Meng Fig. 2, ¶ 69).
Appellant’s argument is not persuasive because the Examiner explains
in detail in the Answer why Meng’s duty cycle disclosure is equivalent to
that of the ’400 Application’s. See Ans. 8. Appellant does not contest the
Examiner’s explanation in the Reply Brief. See generally Reply Br.
On this record, we discern no persuasive reason to reject the
Examiner’s explanation. Cf. Jung, 637 F.3d at 1365 (“[I]t has long been the
Board’s practice to require an applicant to identify the alleged error in the
examiner’s rejections . . . .”).
Based on the above record, we sustain the rejection of claim 17 as
obvious over Meng in view of Moskovits. For the same reasons, we sustain
the rejection of claims 20, 23, 27–30, 33, 36, 37, and 39 as obvious over
these references.
Claim 40
Appellant argues separately that claim 40 is not obvious over Meng in
view of Moskovits. Appeal Br. 10–11. Claim 40 reads: “A building
comprising the translucent construction element according to claim 17,
wherein the translucent construction element is integrated in the building’s
façade with its grating lines aligned horizontally.” Id. at 15 (Claims App.).
The Examiner finds that Meng’s grating lines are inherently aligned
horizontally. Final Act. 9. The Examiner points to Meng’s disclosure of
reflection or absorption of mid-day (high angle) sunlight at windows and
allowance of light transmission at lower angles as necessitating the grid lines
to be horizontal to the building walls in order to achieve the disclosed effect.
Id. 9 (citing Meng ¶¶ 54, 84).
Appellant argues that Meng does not disclose or suggest horizontal
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alignment, but rather suggests usage of typical polarizing filters consisting of
crossed grids, wherein at least one of the gratings must deviate from
horizontal alignment. Appeal Br. 10.
Appellant’s argument is unpersuasive.
Meng discloses at Figure 1 a polarizer in accordance with Meng’s
invention. The polarizer in Figure 1 has parallel lines, and not crossed grids.
Meng Fig. 1. Meng discloses that its polarizers may be used in windows.
Id. ¶ 84. As the Examiner explained, in order to reflect high angle radiation,
Meng’s grating lines must be aligned horizontally.
We sustain the rejection of claim 40 as obvious over Meng in view of
Moskovits.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. § Reference(s)/Basis Affirmed Reversed
17, 20, 23,
27–30, 33, 36,
37, 39, 40
103 Meng, Moskovits
17, 20, 23,
27–30, 33,
36, 37, 39,
40

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED