Debasish Banerjee et al.

Patent Trials and Appeals Board

Dec 13, 2019

14242429 - (D) (P.T.A.B. Dec. 13, 2019)

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.
14/242,429 04/01/2014 Debasish Banerjee TTC-50411/08 3318
63796 7590 12/13/2019
DINSMORE & SHOHL LLP
900 Wilshire Drive
Suite 300
TROY, MI 48084
EXAMINER
CHANG, AUDREY Y
ART UNIT PAPER NUMBER
2872
NOTIFICATION DATE DELIVERY MODE
12/13/2019 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEBASISH BANERJEE, MINJUAN ZHANG, and
MASAHIKO ISHII
Appeal 2018-003481
Application 14/242,429
Technology Center 2800

Before JEREMY J. CURCURI, KARA L. SZPONDOWSKI, and
PHILLIP A. BENNETT, Administrative Patent Judges.
CURCURI, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–5, 9–18, and 20–24. We have
jurisdiction under 35 U.S.C. § 6(b). We heard the appeal on November 13,
2019.
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real parties in interest as Toyota Motor
Engineering & Manufacturing North America, Inc. and Toyota Jidosha
Kabushiki Kaisha. Appeal Br. 2.
Appeal 2018-003481
Application 14/242,429
2
CLAIMED SUBJECT MATTER
The claims are directed to “multilayer thin film structures that exhibit
a minimum or non-noticeable color shift when exposed to broadband
electromagnetic radiation and viewed from different angles.” Spec. ¶ 2.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. An omnidirectional structural color multilayer thin film
comprising:
a multilayer stack having a reflector layer, a dielectric
layer extending over said reflector layer, an absorber layer
extending over said dielectric layer and an outer dielectric layer
extending over the absorber layer, said outer dielectric layer
made from a dielectric material selected from the group
consisting of ZnS and MgF2;
said multilayer stack reflecting a band of visible
electromagnetic radiation having a predetermined full width at
half maximum (FWHM) of less than 200 nm and a
predetermined color shift in the form of a hue shift of less than
30° on an a*b* color map when said multilayer stack is exposed
to broadband electromagnetic radiation and viewed from angles
between 0 and 45°.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Bradley US 6,243,204 B1 June 5, 2001
LeGallee US 6,686,042 B1 Feb. 3, 2004
Raksha US 7,169,472 B2 Jan. 30, 2007

REJECTION
Claims 1–5, 9–18, and 20–24 are rejected under 35 U.S.C. § 103 as
obvious over Bradley, LaGallee, and Raksha. Final Act. 3–6.
Appeal 2018-003481
Application 14/242,429
3
OPINION
The Obviousness Rejection of Claims 1–5, 9–18, and 20–24 over Bradley,
LaGallee and Raksha
The Examiner finds Bradley, LaGallee, and Raksha teach all
limitations of claim 1. Final Act. 3–4.
In particular, the Examiner finds Bradley teaches most limitations of
claim 1 including “a multilayer stack having a reflector layer, a dielectric
layer extending over said reflector layer, an absorber layer extending over
said dielectric layer” and “said multilayer stack reflecting a band of visible
electromagnetic radiation having a predetermined full width at half
maximum (FWHM)” as recited in claim 1. See Final Act. 3.
In particular, the Examiner finds LaGallee teaches a multilayer stack
“can be made to have narrow reflection band with FWHM to be less than
l00nm.” Final Act. 3. The Examiner reasons:
It is therefore either implicitly true or obvious modification to
one skilled in the art, according to the teachings of LeGallee, to
make the nonshifiting [sic] color interference film of Bradley et
al to have a narrow reflection band with peak at magenta to have
FWHM to be less than 200 nm, (with regard to amendment to
claim 1), to ensure the interference film has single color (i.e.
magenta) characteristics.
Final Act. 3.
Among arguments, Appellant presents the following principal
argument:
[T]he teachings of LeGallee are directed to color shifting
pigment flakes that have an exact opposite purpose and effect
as the nonshifting color interference film taught in Bradley et al.
and the omnidirectional structural color multilayer thin film
recited in the pending claims. Accordingly, Appellant submits
LeGallee teaches away from the nonshifting color interference
Appeal 2018-003481
Application 14/242,429
4
film taught in Bradley et al. and the omnidirectional structural
color multilayer thin film recited in the pending claims, and one
skilled in the art would have no motivation to combine the
teachings of LeGallee with Bradley et al.
Appeal Br. 7.
In response, the Examiner finds:
The common knowledge concerning the multilayer thin film
structure, suitable materials, layer thickness and the resultant
reflection band characteristics disclosed in Bradley et al and
LeGallee therefore can be recognized by one skilled in the art
and certainly will motivate one skilled in the art to combine the
teachings of LeGallee with Bradley et al to demonstrate the
reflection band spectrum could have claimed narrow FWHM and
to suggest suitable materials can be used for designing the
multilayer structure.
Ans. 7.
In reply, Appellant argues:
[T]he Examiner’s use of the LeGallee reference for “solely”
having a narrow reflection with a FWHM of less than 100 nm is
clearly “picking and choosing” an isolated portion of the
reference while ignoring the fact that LeGallee is directed to
“pigment flakes [that] exhibit a discrete color shift such that the
pigment flakes have a first color at a first angle of incident light
or viewing and a second color different from the first color at
a second angle of incident light or viewing. (Abstract). That is,
the teachings of LeGallee are directed to color shifting pigment
flakes that have an exact opposite purpose and effect as the
nonshifting color interference film taught in Bradley et al.
Reply Br. 5.
Appellant’s arguments persuade us that the Examiner erred in
combining LeGallee with Bradley. On the record before us, the Examiner’s
Appeal 2018-003481
Application 14/242,429
5
reasoning lacks a rational underpinning. This error is dispositive of the entire
appeal.
Claim 1 requires “a predetermined full width at half maximum
(FWHM) of less than 200 nm.”
Bradley discloses “[a] nonshifting color interference film having a
five layer design.” Bradley col. 10, ll. 20–21; see also Bradley Fig. 3
(nonshifting magenta-to-magenta properties). Bradley further discloses “a
slight variation in the optical thickness of the dielectric layer can result in an
interference film with a significant color shift (Examples 1 and 2) or no
significant color shift (Example 3) even when using the same material for
the dielectric layer.” Bradley col. 10, ll. 56–60; see also Bradley Fig. 3
(shifting gold-to-green and green-to-magenta properties, nonshifting
magenta-to-magenta properties).
LeGalle discloses“[a] conventional color shifting pigment having a
five layer design.” LeGalle, col. 11, ll. 35–36; see also LeGalle Fig. 5, plot
line 50 (depicting a narrowband peak near 450 nm for the five layer design)
On the record before us, the Examiner has not sufficiently shown how
or why a skilled artisan would have modified Bradley’s nonshifting color
interference film to provide “a predetermined full width at half maximum
(FWHM) of less than 200 nm” as recited by claim 1. The cited narrowband
peak in LeGalle is associated with a color shifting pigment and it is not clear
on the record how or why a skilled artisan would modify Bradley’s
nonshifting embodiment, especially given Bradley’s disclosure that slight
variations in the dielectric layer may have significant effects. See Bradley
col. 10, ll. 56–60; see also Bradley Fig. 3 (shifting gold-to-green and green-
to-magenta properties, nonshifting magenta-to-magenta properties).
Appeal 2018-003481
Application 14/242,429
6
The Examiner’s reasoning in the Final Action—“to ensure the
interference film has single color (i.e. magenta) characteristics” (Final Act.
3)—essentially states that a narrowband would be desirable, but there is no
explanation of how or why a skilled artisan would have modified Bradley’s
nonshifting color interference film to provide “a predetermined full width at
half maximum (FWHM) of less than 200 nm” as recited by claim 1. See also
Ans. 7. This is improper hindsight.
We, therefore, do not sustain the Examiner’s rejection of claim 1.
We also do not sustain the Examiner’s rejection of claims 2–5, 9–18,
and 20–24, which depend from claim 1.
CONCLUSION
The Examiner’s decision to reject claims 1–5, 9–18, and 20–24 is
reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–5, 9–18,
and 20–24
103 Bradley, LaGallee,
and Raksha
1–5, 9–18,
and 20–24
Overall
Outcome
1–5, 9–18,
and 20–24
REVERSED