Ex Parte Bugnon et al

Patent Trial and Appeal Board

Jun 29, 2016

12740116 (P.T.A.B. Jun. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121740,116 09/15/2010
4743 7590 07/01/2016
MARSHALL, GERSTEIN & BORUN LLP
233 SOUTH WACKER DRIVE
6300 WILLIS TOWER
CHICAGO, IL 60606-6357
FIRST NAMED INVENTOR
Philippe Bugnon
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.
32471123818 6262
EXAMINER
OSWECKI, JANE C
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
07/01/2016 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):
mgbdocket@marshallip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte PHILIPPE BUGNON, HANS REICHERT,
ALEXANDER STUCK, and HARALD WAL TER1
Appeal2014-007915
Application 12/740,116
Technology Center 1600
Before JEFFREY N. FREDMAN, RYAN H. FLAX,
and TIMOTHY G. MAJORS, Administrative Patent Judges.
MAJORS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to
compositions that include a zero-order diffractive ("ZOD") pigment which
have been rejected as obvious and for obviousness-type double patenting.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
"The present invention relates to the use of pigments showing a colour
effect upon rotation and/or tilting, in particular colour effect pigments
1 Appellants identify the Real Party in Interest as BASF SE. (Br. 3.)
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Application 12/740,116
wherein the color effect is based on zero-order diffraction, in cosmetics,
colouring and coating compositions." (Spec. 1, 11. 3-5.)
Claims 2 and 17-22 are on appeal. Claim 2 is illustrative:
2. Composition comprising
a) a zero-order diffractive pigment, comprising or
consisting of an optical wave-guiding layer, whereas said layer
is made of a material with an index of refraction that is higher
than the index of refraction of the adjacent material by at least
0.25, has a zero-order diffractive grating structure of a period
from 275 to 500 nm and a grating depth from 30 to 300 nm, and
has a thickness between 50nm and 500 nm, and
b) a matrix material comprising a natural or synthetic
organic polymer, a surfactant, cosmetic wax and/or cosmetic
oil,
wherein the pigment is incorporated into the matrix
material in an amount from 0.0001 to 90 % by weight of the
final material obtained or the total composition.
(Br. 16 (Claims App'x).)
The claims stand rejected as follows:
I. Claims 2 and 17-22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Walter et al. (U.S. 7,974,010 B2, issued July 5, 2011)
("Walter"), or, alternatively over Walter and Langlois (WO 96/03962,
published Feb. 15, 1996) ("Langlois").
II. Claims 2, 17-19, 21, and 22 are rejected on the ground of
nonstatutory obviousness-type double patenting over claims 1, 4--7, 9, and
14--15 of Stuck et al. (U.S. 7,864,424 B2, issued Jan. 4, 2011) ("Stuck").
III. Claims 2 and 17-22 are rejected on the ground of nonstatutory
obviousness-type double patenting over claims 1-10, 24, and 25 of Walter.
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IV. Claims 2 and 17-22 are provisionally rejected on the ground of
nonstatutory obviousness-type double patenting over claims 1, 4--9, 15-19,
21-25, 27, and 41--43 of Application No. 13/173,657 to Walter et al. ("the
'657 Application").
DISCUSSION - REJECTION I
Findings of Fact
FF 1. The Examiner's findings of fact and statement of the rejection
of claims 2 and 17-22 under 35 U.S.C. § 103(a) over Walter and,
alternatively, Walter and Langlois may be found at pages 4--8 of the Final
Action dated Aug. 9, 2013. (See also Ans. 2---6, and 13-18.) We adopt those
findings here unless otherwise stated.
Analysis
As Appellants concede, "the present appeal will stand or fall on the
basis of finally rejected independent claim 2." (Br. 6.) We thus address the
rejections under§ 103(a) together, and treat the rejection of claim 2 over
Walter and, alternatively, over Walter and Langlois, as representative.
The Examiner finds, and Appellants do not dispute, that Walter
discloses all but one element of claim 2. The remaining dispute is whether
Walter teaches or suggests the concentration of pigment recited in claim 2' s
final wherein clause: "wherein the pigment is incorporated into the matrix
material in an amount from 0.0001 to 90 % by weight of the final material
obtained or the total composition." (Br. 16 (emphasis added).)
According to Appellants, "no portion of Walter discloses any
quantitative amount of a ZOD pigment that is incorporated into a matrix
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Application 12/740,116
material, let alone the specific weight percent range of the ZOD pigment, as
recited in independent claim 2." (Br. 10.) Appellants continue: "Walter
does not teach or suggest any weight percent range of pigment amounts at
all. How is it appropriate for the Examiner to 'assume' what amounts of
pigments are taught by Walter?" (Id.)
The Examiner acknowledges that Walter does not recite a specific
concentration of ZOD pigment in a matrix. The Examiner finds "Walter
does not anticipate a composition wherein the pigment is incorporated into
the matrix material in an amount from 0.00[0]1 to 90% w/w of the final
material obtained or the total composition, but Walter is suggestive of such a
composition." (Final Act. 6.) According to the Examiner, "because this
[claimed] range necessarily encompasses practically the entire universe of
possible amounts for a pigment in a composition ... [the] skilled artisan
interested in having a matrix composition according to Walter would include
a ZOP [zero-order diffractive pigment] as disclosed by Walter in a non-zero
weight/weight percentage." (Id. at 6-7.) Moreover, the Examiner finds, the
"skilled artisan would optimize the amount of a ZOP in Walter's
compositions to obtain the desired degree of effects characteristic of a ZOP
in the compositions." (Id. at 8.)
The Examiner has the better position. Because Walter teaches
including ZOD pigments in matrix materials (e.g., Walter claim 9), the
concentration of pigment taught and suggested by Walter is something more
than zero and something less than 100%. On the other hand, and as the
Examiner notes, claim 2 encompasses an extremely broad range of pigment
concentration from 0.0001 to 90%. So, while Walter does not explicitly
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Application 12/740,116
state an exact concentration, Walter necessarily suggests a range with
substantial overlap with the vast range that is claimed. In re Peterson, 315
F.3d 1325, 1329 (Fed. Cir. 2003) ("A prima facie case of obviousness
typically exists when the ranges of a claimed composition overlap the ranges
disclosed in the prior art."). Moreover, in view of the absence of persuasive
evidence to the contrary, we agree with the Examiner that the skilled artisan
would predictably optimize the concentration of ZOD pigments in the matrix
to produce a composition as claimed. In re Aller, 220 F .2d 454, 456 (CCP A
1955) ("[W]here the general conditions of a claim are disclosed in the prior
art, it is not inventive to discover the optimum or workable ranges by routine
experimentation."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980)
("[D]iscovery of an optimum value of a result effective variable in a known
process is ordinarily within the skill of the art.") (citations omitted). These
reasons, without more, are sufficient to affirm the Examiner's finding that
claim 2 would have been obvious over Walter alone.
The Examiner goes further, however, and finds that claim 2 would
also have been obvious over Walter and Langlois. (Ans. 2, 4--5.) According
to the Examiner,
[a] ltematively it would have been prim a facie obvious to
a person of ordinary skill in the art at the time the invention was
made to combine the teachings of Langlois for Ti02-coated
platelet-type interference pigments in an amount within a range
from about 0.1 % w/w to about 10% w/w, with the teachings of
Walter for incorporation of zero-order diffractive pigments in
Walter's disclosed matrix in an amount of from 0.00[0]1 to
90% w/w ....
(Id. at 5.) In other words, the Examiner finds it would have been prima facie
obvious to use ZOD pigments in a matrix at concentrations like those
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disclosed in Langlois - resulting in a concentration within the scope of
claim 2.
Appellants respond that the interference pigments of Langlois and
ZOD pigments are different - exhibiting color effects through different
physical phenomena. (Br. 11-12.) For example, Appellants contend that
"[i]nterference pigments are by definition effect pigments whose color is
generated completely or predominantly by the phenomenon of interference
of light," whereas ZOD pigments "show a colour effect upon rotation and/or
tilting ... based on zero-order diffraction." (Id. at 11.) Thus, according to
Appellants, "[a]s Langlois does not even teach or suggest ZOD pigments,
there is no reason one of ordinary skill in the art would tum to Langlois after
reading Walter." (Id. at 13.)
Here again, the Examiner's position is more persuasive. That there
may be some differences between interference pigments and ZOD pigments
does not suggest the skilled artisan would be discouraged from consulting
the teachings of Langlois for pigment concentrations (0.1 to 10%) in an
analogous context. As the Examiner finds, "the interference pigments taught
by Langlois are analogous to the ZOD pigments taught by Walter and as
instantly claimed, and represent an art-accepted amount of pigment that
functions well for its intended purpose in similar compositions." (Ans. 17.)2
Appellants arguments that interference pigments and ZOD pigments are
2 The Examiner provides further support for this allegation at pages 17-18 of
the Answer, which we find persuasive. In addition, the present Specification
describes both ZOD and interference pigments as "effect pigments" and
draws comparisons between the two. (Spec. 10, 11. 1-7.)
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"different" does not grapple with the rejection as presented, but instead
amounts to an attack on Walter and Langlois individually. In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references. . . . [The reference] must
be read, not in isolation, but for what it fairly teaches in combination with
the prior art as a whole."). Such an attack is ineffective in rebutting the
Examiner's prima facie case. Accordingly, we also affirm the Examiner's
rejection of claim 2 based on the combination of Walter and Langlois.
Conclusion of Law
We conclude the Examiner established by a preponderance of the
evidence that claim 2 would have been obvious under 35 U.S.C. § 103(a)
over Walter and, alternatively, over Walter and Langlois.
Claims 17-22 have not been argued separately and therefore fall with
claim 2. 37 C.F.R. § 41.37( c )(1 )(iv).
DISCUSSION - REJECTIONS II-IV
Findings of Fact
FF 2. The Examiner's findings of fact and statement of the rejection
of claims 2, 17-19, 21, and 22 on the ground of nonstatutory obviousness-
type double patenting over claims 1, 4--7, 9, and 14--15 of Stuck may be
found at pages 8-11 of the Final Action dated Aug. 9, 2013. (See also Ans.
6-8, and 18-19.) We adopt those findings here as well as the findings above
related to Rejection I.
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FF 3. The Examiner's findings of fact and statement of the rejection
of claims 2 and 17-22 on the ground of nonstatutory obviousness-type
double patenting over claims 1-10, 24, and 25 of Walter may be found at
pages 11-13 of the Final Action dated Aug. 9, 2013. (See also Ans. 8-10,
and 18-19.) We adopt those findings here as well as the findings above
related to Rejection I and II.
FF 4. The Examiner's findings of fact and statement of the
provisional rejection of claims 2 and 17-22 on the ground of nonstatutory
obviousness-type double patenting over claims 1, 4--9, 15-19, 21-25, 27,
and 41--43 of the '657 Application may be found at pages 13-15 of the Final
Action dated Aug. 9, 2013. (See also Ans. 10-12, and 18-19.) Based on
Patent Office records, the '657 Application went abandoned on Feb. 3, 2015.
Analysis
The Examiner provided specific and reasoned analysis concerning the
obviousness-type double patenting rejections (Rejections II-IV). (FF 2--4.)
Appellants argue all these rejections together, stating only:
in direct contrast with independent claim 2, the claims of the
'424 patent, '010 patent, and '657 application do not recite the
following feature recited in independent claim 2 - "the pigment
is incorporated into the matrix material in an amount from
0.0001 to 90 % by weight of the final material obtained or the
total composition".
(Br. 14.) This merely points out a portion of claim 2 as allegedly absent in
the cited references; it does not rise to the level of a substantive or
persuasive argument on the merits. 37 C.F.R. § 41.37(c)(l)(iv). In re Lovin,
652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board reasonably
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interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art."). As to
Rejection III over Walter, Appellants' argument is further unpersuasive for
the reasons discussed above concerning Rejection I. Because the '657
Application appears to have been abandoned, Rejection IV is moot.
Conclusion of Law
We conclude that the Examiner established by a preponderance of the
evidence that claims 2, 17-19, 21, and 22 are unpatentable over claims 1, 4--
7, 9, and 14--15 of Stuck on the grounds of nonstatutory obviousness-type
double patenting.
We conclude that the Examiner established by a preponderance of the
evidence that claims 2 and 17-22 are unpatentable over claims 1-10, 24, and
25 of Walter on the ground of nonstatutory obviousness-type double
patenting.
The provisional rejection of claims 2 and 17-22 on the ground of
nonstatutory obviousness-type double patenting over claims 1, 4--9, 15-19,
21-25, 27, and 41--43 of the '657 Application is moot.
SUMMARY
We affirm the rejection: (i) of claims 2, and 17-22 under§ 103(a)
over Walter and, alternatively, over Walter and Langlois; (ii) of claims 2,
17-19, 21, and 22 on the grounds of nonstatutory obviousness-type double
patenting over claims 1, 4--7, 9, and 14--15 of Stuck; and (iii) of claims 2,
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and 17-22 on the grounds of nonstatutory obviousness-type double patenting
over claims 1-10, 24, and 25 of Walter.
The provisional nonstatutory obviousness-type double patenting
rejection based on the '657 Application (now abandoned) is moot.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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