Ex Parte Cheng et al

Patent Trial and Appeal Board

Dec 18, 2018

13241997 (P.T.A.B. Dec. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/241,997
24959 7590
PPG Industries, Inc.
IP Law Group
One PPG Place
39th Floor
Pittsburgh, PA 15272
09/23/2011
12/18/2018
FIRST NAMED INVENTOR
Shan Cheng
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.
l 1008028Al 4655
EXAMINER
RAKOWSKI, CARA E
ART UNIT PAPER NUMBER
2872
MAIL DATE DELIVERY MODE
12/18/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHAN CHENG, NOEL R. VANIER, WEI WANG, and
XIANGLING XU
Appeal2017-003698
Application 13/241,997
Technology Center 2800
Before JULIA HEANEY, JEFFREY R. SNAY, and BRIAND. RANGE,
Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 2, 4--7, 9--17, and 23. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
1 We refer to the Specification ("Spec.") filed September 23, 2011, as
amended; Final Office Action ("Final Act.") dated April 14, 2016;
Appellants' Appeal Brief ("App. Br.") filed August 30, 2016; Examiner's
Answer ("Ans.") dated November 3, 2016; and Appellants' Reply Brief
("Reply Br.") filed January 3, 2017.
2 Appellants identify PPG Industries Ohio, Inc. as the real party in interest.
App. Br. 3.
Appeal2017-003698
Application 13/241,997
BACKGROUND
The subject matter on appeal relates to crystalline colloidal arrays
produced from hollow particles. Spec. ,r 1. According to the Specification,
the described arrays exhibit angle-dependent diffraction effects and,
therefore, are suited for use in a security or authentication device. Id. ,r 10.
Claim I-the sole independent claim on appeal-is illustrative:
1. A coating composition comprising:
(a) a film-forming material that enables the coating
composition to be applied to a surface; and
(b) a separate interference-effect composition received
within the film-forming material and comprising a radiation
diffracting member having a crystalline structure, said radiation
diffracting member comprising: (i) an ordered periodic array of
hollow particles, each hollow particle comprising a shell
produced from a shell material and defining an interior region
comprising air; and (ii) a polymeric matrix material in which
said array of particles is received, wherein said matrix material
is different from said shell material.
App. Br. 24 (Claims Appendix) ( emphasis added to highlight the key
recitation in dispute).
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Appeal2017-003698
Application 13/241,997
REJECTI0NS 3
I. Claims 1, 2, 4--7, 9--14, 16, and 17 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Munro4 and Eida. 5
II. Claim 15 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Munro, Eida, and Schwartz. 6
III. Claim 23 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Munro, Eida, and Jiang. 7
IV. Claims 1, 2, 4--7, 9--14, 16, and 17 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Munro and Xu, 8 as evidenced by Eida and
Purdy. 9
V. Claims 15 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Munro, Xu, and Schwartz, as evidenced by Eida and Purdy.
VI. Claim 23 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Munro, Xu, and Jiang, as evidenced by Eida and Purdy.
3 Each claim on appeal is rejected on the ground of nonstatutory
obviousness-type double patenting over claims in U.S. Patent No. 8,133,938;
8,289,618; or 8,641,933. Final Act. 3-23. Appellants do not challenge these
rejections in either the Appeal Brief or the Reply Brief. Accordingly, we
summarily sustain each double patenting rejection set forth in the Final
Office Action.
4 US 2007/0165903 Al, published July 19, 2007 ("Munro").
5 US 2007/0121129 Al, published May 31, 2007 ("Eida").
6 US 6,114,023, issued September 5, 2000 ("Schwarz").
7 US 2002/0143073 Al, published October 3, 2002 ("Jiang").
8 Xu, X. et al., Synthesis and Utilization of Monodisperse Hollow Polymeric
Particles in Photonic Crystals, 126 J. Am. Chem. Soc. 7940--45 (2004)
("Xu").
9 US 2009/0155545 Al, published June 18, 2009 ("Purdy").
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Appeal2017-003698
Application 13/241,997
OPINION
Rejection I
With regard to Rejection I, Appellants separately argue claims 1, 2, 5,
and 6. App. Br. 10-18, 20-21. We need only address claim 1.
Relevant to Appellants' arguments on appeal, the Examiner finds that
Munro discloses a coating composition that meets all of the features recited
in claim 1, including an ordered periodic array of core/shell particles, except
that Munro does not specify that the particle cores comprise air. Final Act.
24--25. Rather, Munro teaches polymer cores that may or may not differ
from the polymer shells. Munro ,r,r 18, 19. The Examiner finds that Eida
teaches use of air-filled hollow particles as "scattering particles in an optical
layer." Final Act. 25 ( citing Eida ,r 63). Eida teaches that air-core particles
provide enhanced scattering due to a large difference in refractive index of
the air core relative to that of the binder in which the particles reside. Eida
,r 63. In light of these teachings, the Examiner finds that one of ordinary
skill in the art would have had a reason to substitute air for Munro's particle
core "for the purpose of obtaining a large refractive index difference
between the air inside and the material in which the particles reside." Final
Act. 25. Alternatively, the Examiner reasons that such a modification would
have amounted to the "selection of a known material based on its suitability
for its intended use." Id.
Appellants argue, inter alia, that the Examiner's articulated reasons
for modifying Munro's particles are insufficient to support a prima facie
case of obviousness. App. Br. 16. We agree. The Examiner does not point
to evidence of record to show that the large refractive index disparity taught
by Eida would have been useful or beneficial in Munro's composition.
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Application 13/241,997
Although Eida teaches such disparity as enhancing light scattering, Munro's
composition is formulated to yield angle-dependent diffraction. The
Examiner does not address whether or why Eida's enhanced scattering
would have been useful in connection with Munro's diffractive coating.
Accordingly, we are persuaded that the Examiner erred in finding that
Eida provides a reason to modify Munro's particles. Accordingly, Rejection
I is not sustained.
Rejections II and III
Neither Schwartz nor Jiang is relied upon by the Examiner in a
manner that would cure the deficiency discussed above in connection with
Rejection I. Accordingly, Rejections II and III also are not sustained.
Rejection IV
With regard to Rejection IV, Appellants separately argue claims 1, 2,
5, and 6. We address each in tum.
Claim 1
The Examiner finds that Xu, like Munro, discloses use of ordered
particles for diffracting light. Final Act. 32. The Examiner further finds that
Xu teaches use of air-filled hollow particles for that purpose. Id. In light of
Xu's teaching, the Examiner determines that it would have been obvious to
one of ordinary skill in the art to use air as the core material in Munro's
core/shell particles based on its known suitability in forming diffractive
particle compositions, and to provide a desired effect on the refractive index
of the composition. Id. at 32-33. See also Munro ,r,r 15, 24 (explaining that
the diffracted wavelength is proportional to the effective refractive index of
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Appeal2017-003698
Application 13/241,997
the material, and that effective refractive index is approximated as a volume
average of the refractive index of the different materials of the array). The
Examiner additionally relies on Purdy as evidence that increasing refractive
index contrast between the core and shell materials would have had a desired
effect of increasing diffraction intensity. Final Act. 33 ( citing Purdy ,r 17).
Appellants argue that "Xu discloses optical effects of particles filled
with ethanol, not air." App. Br. 19; Reply Br. 6. Appellants further argue
that the combination of Munro and Xu lacks a reasonable expectation of
success because Xu teaches that hollow particles deform when dried which,
according to Appellants, would preclude formation of an ordered periodic
array. App. Br. 20.
Appellants' arguments are unpersuasive. Xu expressly teaches
forming hollow particles, e.g. by "coat[ing] a sacrificial core particle with a
shell" and "decompos[ing] or dissolve[ing] away the core." Xu 7940.
Although Xu teaches cleaning the particles by centrifugation and dispersion
in ethanol, "the hollow particles are monodisperse in both outer and inner
diameter after the ethanol in the core evaporates." Id. at 7942 (emphasis
added). According to Xu, upon centrifugation from ethanol, the hollow
particles "form well-ordered close-packed colloidal crystals that diffract
light." Id. Abstract. In light of these teachings in Xu, we are not persuaded
that Xu's disclosure of hollow particles is limited to particles filled with
ethanol. Nor are we persuaded that one of ordinary skill would have lacked
a reasonable expectation of success in seeking to use hollow particles to
form Munro's diffractive ordered array. Appellants do not address the
Examiner's additional reliance on Purdy.
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Application 13/241,997
For the foregoing reasons, we sustain Rejection IV as applied to claim
1, as well as each of claims 4, 7, 9--14, 16, and 17 which are not separately
argued.
Claim 2
Claim 2 requires that the effective refractive index of material in a
plurality of second planes through the crystalline structure is at least 0.15
greater than the effective refractive index of a different plurality of first
planes that pass through the hollow particles. The Examiner finds that
Munro's ordered array includes first and second pluralities of planes,
viewing the first planes as those passing primarily through adjacent particle
layers and the second planes as those passing primarily between particle
layers. Final Act. 33. The Examiner finds that Purdy teaches that
diffraction intensity may be increased by providing a higher refractive index
contrast between alternating particle/matrix layers. Id. (citing Purdy ,r 17).
The Examiner reasons that the claimed refractive index relationship would
have resulted from an obvious optimization of core, shell, and matrix
materials. Id.
Appellants argue that there is no evidence of record to support a
finding that one skilled in the art would have viewed the difference in
refractive index between planes as a result-effective variable subject to
optimization. App. Br. 20-21. We disagree. Purdy states that "[t]he
intensity of the diffracted light is dependent on the refractive index variation
within the imaging member." Purdy ,r 1 7. Purdy explains, "Higher
refractive index contrast between alternating layers also produces greater
diffraction intensity." Id. "Higher refractive index contrast between
alternating layers can be achieved by using particles and matrix having a
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Application 13/241,997
relative large difference in their respective indices of refraction." Id. These
teachings in Purdy support the Examiner's finding that refractive index
contrast between particle layers and matrix material was a known result-
effective variable.
Rejection IV as applied to claim 2 is sustained.
Claims 5 and 6
The Examiner's rejection of claims 5 and 6 is premised on a finding
that Munro's teaching of polystyrene necessarily teaches a crosslinked
polymer because polystyrene is crosslinked. Final Act. 34. Appellants
correctly point out that the Examiner provides no evidentiary basis for
concluding that Munro's polystyrene material is inherently crosslinked.
Rejection IV as applied to each of claims 5 and 6 is not sustained.
Rejection V
Claim 15 requires the diffractive coating composition to be provided
on a microporous support. Munro discloses providing a diffractive coating
composition as a security marker on articles (Munro ,r 6), such as paper (id.
,r,r 5, 55). The Examiner finds that Schwarz teaches use of a microporous
support material that improves readability of indicia, patterns, and designs
printed thereon. Appellants argue that the improved readability taught by
Schwarz is accomplished by the presence of blue colorant. App. Br. 21.
However, Appellants do not explain why blue colorant would be excluded
by the language of claim 15, or why its presence in the microporous support
to be marked by Munro's diffractive coating weighs against the Examiner's
articulated reasoning of obviousness.
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Application 13/241,997
Rejection Vis sustained.
Rejection VI
Appellants argue that Xu discloses hollow particles having an average
refractive index of 1.52 and, for that reason, "the combination of references
cannot disclose or suggest a plane passing through hollow particles having a
refractive index of between about 1.2 and 1.25." App. Br. 22. However,
Appellants' argument does not address the Examiner's obviousness rationale
regarding the effective refractive index which would result from providing
Munro's core/shell particles with an air core. Final Act. 37. Nor does
Appellants' argument address the Examiner's determination that the
effective refractive index through alternating planes of particles would have
been recognized as a result-effective variable subject to optimization. Id.
Accordingly, Appellants do not persuade us of reversible error.
Rejection VI is sustained.
CONCLUSION
The Rejection of claims 1, 2, 4--7, 9-17, and 23 on the ground of non-
statutory obviousness-type double patenting is summarily sustained.
The Rejection of claims 1, 2, 4, 7, 9-17, and 23 on the ground of
obviousness is sustained.
The Rejection of claims 5 and 6 on the ground of obviousness is not
sustained.
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Application 13/241,997
DECISION
The Examiner's decision is affirmed.
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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