Ex Parte Bujard

Patent Trial and Appeal Board

Jul 27, 2018

11922061 (P.T.A.B. Jul. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/922,061 12/12/2007
4743 7590 07/31/2018
MARSHALL, GERSTEIN & BORUN LLP
233 SOUTH WACKER DRIVE
6300 WILLIS TOWER
CHICAGO, IL 60606-6357
FIRST NAMED INVENTOR
Patrice Bujard
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.
32471/23338 3323
EXAMINER
PURDY, KYLE A
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
07/31/2018 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
Ex parte PATRICE BUJARD 1
Appeal2017-006302
Application 11/922,061
Technology Center 1600
Before RICHARD J. SMITH, RYAN H. FLAX, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a pigment
that comprises a glass substrate that consists of ECR ( extra corrosion
resistant) glass.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is BASF SE (BASF).
( Appeal Br. 3.)
Appeal2017-006302
Application 11/922,061
STATEMENT OF THE CASE
Claims on Appeal
Claims 1, 3-5, 7, 8, 11, 15, 16, and 18-20 are on appeal. (Claims
Appendix, Appeal Br. A-1 to A-3.) Claim 1 is illustrative and reads as
follows:
1. A pigment, comprising a plate-like substrate of glass having
an average thickness of from < 1 µm, and
(a) a dielectric material, having a high index of
refraction greater than 1.65; or
(a) a thin semi-transparent metal layer,
wherein the glass substrate consists of ECR glass having
> 0.1 % Ti 02, and has a defined thickness in the range of± 40%
of the average thickness,
wherein the pigment has a length of from 2 µm to 5 mm, a
width of from 2 µm to 2 mm, and a ratio of length to thickness of
at least 5: 1, and
wherein the ECR glass comprises Si02 (63-70%), Ah03
(3-6%), CaO (4-7%), MgO (1-4%), B203 (2-5%), Na20 (9-12%),
K20 (0-3%), Ti02 (>0.1-4%), and ZnO (1-5%).
Examiner's Rejection
Claims 1, 3-5, 7, 8, 11, 15, 16, and 18-20 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Ambrosius,2 Bujard,3 and GlassFlake. 4 (Final
Act. 3-6.)5
2 Ambrosius et al., US 2004/0170838 Al, published Sept. 2, 2004
("Ambrosius").
3 Patrice Bujard, WO 2004/044060 Al, published May 27, 2004 ("Bujard").
4 Glassflake Limited brochure published March 2003, entitled New
Dimensions in Strength and Stability ("GlassFlake").
5 Final Office Action dated Feb. 25, 2016 ("Final Act.").
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Application 11/922,061
FINDINGS OF FACT
The following findings are provided for emphasis and reference
purposes. Additional findings may also be found in this Decision, the Final
Action, and the Examiner's Answer.
FF 1. Ambrosius discloses multilayer pigments based on glass flakes,
having an average thickness of >0.2 to <0.5 µm, and that the glass can be
classified as ECR glass. (Ambrosius Abstract, ,r,r 26, 75; Final Act. 3.)
FF 2. The Examiner finds that Bujard is directed to interference pigments
comprising at least one layer of a metal and at least one layer of glass (Si Oz).
(See Bujard Title, Abstract, 2; Final Act. 4; Ans. 8.)
FF 3. Bujard discloses that its pigments "are particles, which generally have
a length of from 2 µm to 5 mm, a width of from 2 µm to 2 mm, and a
thickness of from 20 nm to 2 µm, and a ratio of length to thickness of at least
2: 1." (Bujard 3, 11. 14--16.)
FF 4. The Examiner finds that the ranges of lengths and thicknesses taught
by Bujard teach ratios of length to thickness that overlap the claimed ratio of
"at least 5:1," and that "the range ofBujard [at least 2:1], in most instances,
completely encompass[es] the range set forth by Applicant [at least 5: 1]
which any ordinary person could reasonably achieve with an expectation for
success." (Final Act. 4; Ans. 8-9.)
FF 5. Bujard discloses that its flakes have "a defined thickness in the range
of± 10 %, especially± 5 % of the average thickness." (Bujard 12, 11. 15-
16.)
FF 6. GlassFlake discloses extra corrosion resistant (ECR) composition
glass with desirable properties (Glass Flake 1-8), having the following
composition:
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Application 11/922,061
!
2
3
4
s
6
7
8
9
Si02 64--70%
K.2:0 0-3%
B2Q3 2-5%
ZnO 1-5%
Na20 8-13%
MgO 1-4%
cao 3-7%
AbQ,1 3-6%
TiOi 0-3%
The chart above illustrates the compounds and percentages thereof in
a typical ECR glass composition of GlassFlake. (GlassFlake 6.) The above
illustrated compounds and respective percentages are identical or virtually
identical to those recited in claim 1. Compare claim 1 with GlassFlake 6.
DISCUSSION
We adopt the Examiner's findings, analysis, and conclusions,
including with regard to the scope and content of, and motivation to
combine, the prior art, as set forth in the Final Action and Answer. We
discern no error in the rejection of the claims on appeal as obvious.
Issue
Whether a preponderance of evidence of record supports the
Examiner's rejection under 35 U.S.C. § 103(a).
Analysis
We limit our consideration to claim 1 because the claims were not
argued separately.
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Examiner's Position
The Examiner determined that "it would have been obvious to one of
ordinary skill in the art at the time the invention was made to modify the
composition of Ambrosius" (FF 1 ), wherein the pigment particles "have a
length of from 2 µm to 5 mm, a width of from 2 µm to 2 mm, and a
thickness of from 20 nm to 2 µm, and a ratio of length to thickness of at least
2: 1, as taught by Bujard" (FF 2--4), and "a glass composition comprising
Si02 (63-70%), Ab03 (3-6%), CaO (4-7%), MgO (1-4%), B203 (2-5%),
Na20 (9-12%), K20 (0-3%), Ti02 (0-4%), and ZnO (1-5%), as taught by
GlassFlake [(FF 6)], with a reasonable expectation for success." (Final Act.
5-6.) The Examiner thus concluded that the claimed invention was prima
facie obvious "as evidenced by the references, especially in [the] absence of
evidence to the contrary." (Id. at 6.)
Appellant's Arguments
As an initial matter, Appellant generally argues the references
individually, such as by separately arguing that neither Ambrosius nor
Bujard disclose the specific ECR glass disclosed by GlassFlake. (See, e.g.,
Appeal Br. 14, 16.) But nonobviousness cannot be established by attacking
references individually where (as here) the Examiner bases the rejection on a
combination of references. See In re Keller, 642 F.2d 413, 425 (CCPA
1981). Nevertheless, we address Appellant's arguments with respect to each
reference as advanced in the Appeal Brief.
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Ambrosius
Appellant argues that Ambrosius 6 "fails to teach or suggest the
presently-recited ECR glass having >0.1 % Ti02," or an ECR glass having
the specific compounds and percentages recited in claim 1. (Appeal Br. 13-
14; Reply Br. 1.) Furthermore, according to Appellant, "a general disclosure
of ECR glass [in Ambrosius] does not lead automatically to the presently
claimed ECR glass." (Appeal Br. 13-14.) Appellant also argues that
Ambrosius "fails to recognize or achieve the advantageous results obtained
when pigments consist of the presently recited glass substrates." (Id. at 14.)
We are not persuaded. The fact that Ambrosius refers to quartz glass
as preferred for its invention does not diminish its disclosure of ECR glass.
In re Mills, 470 F.2d 649, 651 (CCP A 1972) ("[a]ll the disclosures in a
reference must be evaluated, including nonpreferred embodiments").
Moreover, the test for obviousness is "what the combined teachings of the
references would have suggested to those of ordinary skill in the art." See
Keller, 642 F.2d at 425. Here, the rejection is based on the combination of
Ambrosius, which teaches the use of ECR glass, Bujard which teaches
certain desirable dimensions of pigments based on a glass flake core, and the
teachings of GlassFlake, which teaches the claimed ECR glass and its
desirable properties. 7 (See Ans. 6-9.) Moreover, the GlassFlake teaching of
0-3% Ti02 is a teaching of the claimed >0.1 % Ti 02. See In re Peterson,
6 Appellant refers to Ambrosius as the '838 publication.
7 We acknowledge, but are unpersuaded by, Appellant's contention that the
rejection includes the selection of ECR glass from Ambrosius and the
specific ECR glass of GlassFlake. (See, e.g., Reply Br. 1-2.) However,
"picking and choosing may be entirely proper in the making of a 103,
obviousness rejection." In re Arkley, 455 F.2d 586, 587 (CCPA 1972).
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315 F.3d 1325, 1329 (Fed. Cir. 2003) ("even a slight overlap in range[s]
establishes a prima facie case of obviousness").
Bujard
Appellant argues that Bujard8 "fails to cure the deficiencies of
[Ambrosius] with respect to the claimed ECR glass or the length, width, and
length-to-thickness ratio of the presently recited pigments." (Appeal Br. 15.)
In particular, Appellant argues that "[i]f a portion of the presently-recited
length-to-thickness range should be encompassed by the length-to-thickness
range of [Bujard]," then a person of ordinary skill in the art would not be
motivated to tum to Bujard or modify the dimensions of the multilayer
pigments based on glass flakes [i.e., Ambrosius] "because [Bujard] is not
directed to pigments based on glass flakes." (Id.) According to Appellant,
the interference pigments of Bujard are on silicon oxide/metal substrates
(not based on glass flakes as discussed in Ambrosius) and "no motivation
exists ... to interchange the silicon oxide/metal substrates of [Bujard] for
any type of glass substrate, let alone specifically an ECR glass, for the SiOz
layer of [Bujard]." (Id. at 15-16.) Appellant further argues that, because
Bujard does not teach or suggest an ECR glass substrate, Bujard "fails to
teach or suggest ... an ECR glass substrate having an average thickness of
< 1 µm and a defined thickness in the range of± 40 % of the average
thickness, as required by independent claim 1." (Id. at 16.)
We are not persuaded. The Examiner finds that "Bujard, like
Ambrosius, provides an interference pigment based on a glass flake core."
(Ans. 8.) The Examiner also finds that Bujard teaches its pigments
8 Appellant refers to Bujard as WO '060.
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"generally" have certain length, width, and thickness ranges, as well as a
ratio of length to thickness of at least 2: 1. (Id.) As the Examiner further
finds, the length and thickness ranges disclosed by Bujard teach ratios of
length to thickness that overlap the claimed ratio of "at least 5: 1." (Final
Act. 4; Ans. 8-9; FF 4.) Furthermore, the Examiner does not rely on Bujard
for teaching an ECR glass; Ambrosius teaches an ECR glass substrate
having an average thickness of< 1 µm (FF 1) and Bujard teaches the defined
thickness is in a range of the average thickness that is overlapped by the
claimed range (FF 5). Here, the prior art ranges of length to thickness ratios
and defined thickness to average thickness establish a prima facie case of
obviousness as to the respective claim limitations, and Appellant provides no
evidence of criticality of those claim limitations, such as with evidence of
unexpected results. See Peterson, 315 F .3d at 1330; see also Final Act. 6
(prima facie obvious "in [the] absence of evidence to the contrary").
GlassFlake
Appellant argues that, although "GlassFlake teaches various enhanced
properties attributed to ECR glass ... not one ... is directed to interference
pigments useful in dying textiles, paints, plastics, and coatings, for
example." (Appeal Br. 16.) Appellant further argues that GlassFlake does
not teach the thickness limitations as claimed. (Id. at 17 .) Finally, Appellant
argues that the recited ECR glass substrate is significant because it results
"in interference pigments having superior brilliance, clear and intense colors,
intense color flop, improved color strength and/or color purity" that could
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not have been predicted from the combination of the cited references. (Id. at
16-17.)
We are not persuaded. Ambrosius teaches the use of ECR glass
pigments and the use of those pigments in paints, plastics, and coatings, for
example. (Ambrosius Abstract; Final Act. 3.) Thus, it would have been an
obvious substitution of the ECR glass of GlassFlake for the ECR glass of
Ambrosius, yielding predictable results. See KSR Int 'l Co. v. Teleflex Inc.,
550 U.S. 398, 416 (2007). Regarding the claimed thickness limitations,
those are taught by Ambrosius and Bujard. See Keller, 642 F.2d at 425. As
to the predictability of certain properties recited in the Specification, we note
that "[i]n determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed purpose of the
patentee controls." See KSR, 550 U.S. at 419. Furthermore, we find that
Ambrosius discloses that its pigments have "superior brilliance" and "clear
and intense colors." (See Ambrosius ,r,r 64--66.)
Accordingly, for the reasons of record and as set forth above, we
affirm the rejection of claim 1. Claims 3-5, 7, 8, 11, 15, 16, and 18-20 fall
with claim 1 because they were not argued separately.
Conclusion of Law
A preponderance of evidence of record supports the Examiner's
rejection of claims 1, 3-5, 7, 8, 11, 15, 16, and 18-20 under 35 U.S.C.
§ 103(a).
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SUMMARY
We affirm the rejection of all claims on appeal.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a).
AFFIRMED
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