Ex Parte Coughlin

Patent Trials and Appeals Board

Apr 16, 2019

11691278 - (D) (P.T.A.B. Apr. 16, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/691,278 03/26/2007
24504 7590 04/18/2019
THOMAS I HORSTEMEYER, LLP
3200 WINDY HILL ROAD, SE
SUITE 1600E
ATLANTA, GA 30339
FIRST NAMED INVENTOR
Patrick Raymond Coughlin JR.
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.
170301-1010 5397
EXAMINER
ABU ALI, SHUANGYI
ART UNIT PAPER NUMBER
1731
NOTIFICATION DATE DELIVERY MODE
04/18/2019 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
following e-mail address(es):
uspatents@tkhr.com
ozzie. liggins@tkhr.com
docketing@thomashorstemeyer.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PATRICK RAYMOND JR. COUGHLIN
Appeal2018-006073
Application 11/691,278
Technology Center 1700
Before KAREN M. HASTINGS, LILAN REN, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134 from a rejection2 of claims
1, 4--13, 25-32, and 35--42. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as "the inventor Patrick Raymond
Coughlin, Jr." Appeal Brief of November 3, 2017 ("Br."), 2.
2 Final Office Action of February 2, 2017 ("Final Act."). In this opinion, we
also refer to the Examiner's Answer of March 28, 2018 ("Ans.") and the
Reply Brief of May 24, 2018 ("Reply Br.").
Appeal2018-006073
Application 11/691,278
CLAIMED SUBJECT MATTER
The claims are directed to a packetized colorization of coatings.
Claims 1 and 25, reproduced below, are illustrative of the claimed subject
matter:
1. A system, comprising:
a predefined volume of a liquid coating;
a packet constructed from a material dissolvable in the
liquid coating; and a quantity of dry powder pigment in the
packet, the dry powder pigment being pretreated to disperse in
the liquid coating, the quantity of the dry powder pigment in the
packet being configured to impart a predefined color to the
predefined volume of the liquid coating, and the packet being
dissolvable in the liquid coating to completely release and
disperse the dry powder pigment in the liquid coating upon
adding the packet to the liquid coating.
25. A system, comprising a liquid coating;
at least one packet constructed from a material
dissolvable in the liquid coating, and a quantity of dry powder
pigment contained in the at least one packet, the dry powder
pigment being pretreated to disperse in the liquid coating; and
a label associated with the at least one packet, the label
indicating a volume of the liquid coating to which the at least
one packet is to be applied, the dry powder pigment contained
in the at least one packet being configured to impart a
predefined color to the volume of the liquid coating and the
packet being dissolvable in the liquid coating to facilitate a
release and dispersal of the dry powder pigment in the liquid
coating.
Claims Appendix (Br. 73, 75).
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
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Plunguian
Saunders
Shull
Sugimoto
Binns
Hanson
us 4,098,755
us 3,444,118
us 3,580,390
us 5,224,595
US 6,287,377 Bl
US 7,172,073 B2
REJECTIONS
Jul. 4, 1978
May 13, 1969
May 25, 1971
July 6, 1993
Sep. 11, 2001
Feb. 6,2007
The Examiner rejects claims 41 and 42 "under 35 U.S.C. 112(a) or 35
U.S.C. 112 (pre-AIA), first paragraph, as failing to comply with the written
description requirement." Final Act. 2.
The Examiner rejects claims 1, 4--10, 31, and 35--41 under pre-AIA 35
U.S.C. § I03(a) as being unpatentable over Shull and Sugimoto. Final Act.
3.
The Examiner rejects claims 1, 4-10, 31, and 35-42 under pre-AIA
35 U.S.C. § I03(a) as being unpatentable over Shull, Sugimoto, and Binns.
Final Act. 8.
The Examiner rejects claims 11-13, 25, 26, and 28-30 under pre-AIA
35 U.S.C. § I03(a) as being unpatentable over Shull, Sugimoto, and
Saunders as well as over Shull, Sugimoto, Binns, and Saunders. Final Act. 6,
10.
The Examiner rejects claim 27 under pre-AIA 35 U.S.C. § I03(a) as
being unpatentable over Shull, Sugimoto, Saunders, and Hanson as well as
over Shull, Sugimoto, Binns, and Hanson. Final Act. 7, 11.
The Examiner rejects claim 32 under pre-AIA 35 U.S.C. § I03(a) as
being unpatentable over Shull, Sugimoto, Saunders, and Plunguian as well
as over Shull, Sugimoto, Binns, and Plunguian. Final Act. 7, 12.
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OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Cf Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 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 examiner's rejections.")).
After having considered the evidence presented in this Appeal and
each of Appellant's contentions, unless otherwise noted, we are not
persuaded that Appellant identifies reversible error, and we affirm most of
the Examiner rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
Written Description Rejection of Claims 41 & 42
The dispositive issue in the written description rejection of dependent
claims 41 and 42 is whether the limitation "the dry powder pigment is
insoluble before pretreatment" is supported. See Final Act. 3.
Appellant argues that paragraph 17 of the specification lists "several
dry powder pigments ... that are inherently insoluble before treatment." Br.
6. For additional support, Appellant also points to paragraph 14 of the
specification which states that "[t]he dry powder pigment 109 contained in
the packet is pretreated using any dry dispersion technology so as to be able
to disperse in the coating 106 upon agitation." Id.
Because there is no evidence supporting Appellant's assertion that a
skilled artisan would know that the examples listed in paragraph 37 of the
specification are inherently insoluble, we are unpersuaded by such an
unsupported argument. Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed.
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Cir. 1989) ("Attorneys' argument is no substitute for evidence."). 3 Paragraph
14 of the specification is directed to dispersion only and we discern no
reversible error in the Examiner's finding that the recited insolubility is not
disclosed. Compare Final Act. 13 (finding that "the treated pigment
dispersible is not same as the pretreatment pigment is insoluble"), with Br.
6-7 (disagreeing with the written description rejection without addressing
the Examiner's finding distinguishing dispersion and insolubility).
Rejection of Claim 1 over Shull & Sugimoto 4
Appellant argues that Shull describes "'finish plaster power' that is
mixed with the water containing the dye to form a 'slurry or paste'" and
does not teach or suggest "a predefined volume of a liquid coating" as
recited in claim 1. Br. 9. Appellant cites a declaration by Mr. Patrick
Raymond Coughlin, Jr. ("Deel.") in support of this argument. Id. Because
Mr. Coughlin's declaratory statement is premised on the prior art "[a]t the
3 For the first time, Appellant raises in the Reply Brief an argument based on
a declaration dated April 21, 2011 for the written description rejection.
Reply Br. 4--5. Because the Examiner has not been given an opportunity to
consider this argument, we decline to consider it particularly in light of the
fact that Appellant does not explain why it could not have been raised
previously. See Ex parte Nakashima, 93 USPQ2d 1834 (BPAI 2010)
(informative) ( explaining that arguments and evidence not timely presented
in the principal Brief will not be considered when filed in a Reply Brief,
absent a showing of good cause explaining why the argument could not have
been presented in the Principal Brief); Ex parte Borden, 93 USPQ2d 1473,
14 77 (BP AI 2010) (informative) ("Properly interpreted, the Rules do not
require the Board to take up a belated argument that has not been addressed
by the Examiner, absent a showing of good cause.").
4 Because Appellant does not argue the rejection of claims 6-10, 31, 35, 36,
and 41 over Shull and Sugimoto separately, they stand or fall with claim 1
for the rejection over Shull and Sugimoto. Br. 8-13; see also 37 C.F.R.
§ 4I.37(c)(l)(iv).
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time of the filing of the Shull patent" (Deel. ,r 10) and does not address
whether the prior art, in light of the knowledge of a person of ordinary skill
in the art "at the time of the invention," teaches or suggests the subject
matter of the properly supported and construed claims, Unigene Labs., Inc.
v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011) (providing the test for
analyzing obviousness), we are unpersuaded by the declaratory evidence of
reversible error.
In addition, "Appellant simply asserts that the cement mixture
described by Sugimoto is not a liquid coating" but "is made up of significant
particulate matter." Br. 11. Such a statement of disagreement does not
identify reversible error, nor does it offer a construction of the term "liquid
coating" different from that of the Examiner. Compare id., with Final Act.
14 ( construing "liquid coating" to be "any composition [that] comprises
liquid such as water); see also Br. 12 (asserting, without explanation, that
"Appellant respectfully asserts that it is entirely unreasonable to interpret
wet cement as a liquid coating as set forth in the Office Action"). We further
note that the specification provides that coating 106 may be "a water-based
coating" (Spec. ,r 20) which supports the Examiner's interpretation of "a
liquid coating." In construing claims, "the PTO must give claims their
broadest reasonable construction consistent with the specification ....
Therefore, we look to the specification to see if it provides a definition for
claim terms, but otherwise apply a broad interpretation." In re ICON Health
& Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). "[A]s applicants may
amend claims to narrow their scope, a broad construction during prosecution
creates no unfairness to the applicant or patentee." Id.
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Appellant also does not address the Examiner's findings with regard
to Sugimoto in support of the rejection. Compare Br. 11, with Final Act. 13-
14 (finding that the cement mixture in Sugimoto includes water and
therefore encompasses the recited "liquid coating"), 4--5 ( explaining that a
skilled artisan would have found the claim obvious given Sugimoto's
teaching that "the colorant such as a commercially available titanium oxide
was filled in a predetermined amount in the package, the package was
thrown into the base concrete, and the colorant was added under stirring");
see also Spec. ,r 17 ("The pigment 109 may comprise organic and inorganic
pigments ... such as "titanium dioxide .... "). Because the Examiner's
finding is reasonable and the Appellant has not challenged it, we accept it as
fact. See In re Kunzmann, 326 F.2d 424,425 n.3 (CCPA 1964). We again
note that the specification provides that the coating may include
"architectural coatings, industrial coatings, or specialty coatings such as, for
example paint, stain, or other coating as will be described" which "may be
water-based, solvent based, and/or a hybrid blend of water and solvent
carriers." Spec. ,r,r 12, 16. The Examiner's finding is therefore supported by
the specification. No reversible error has therefore been identified in the
Examiner's finding in this aspect of the obviousness analysis.
Appellant next argues that the Examiner reversibly erred in finding
that Shull teaches or suggests "the packet being dissolvable in the liquid
coating to completely release and disperse the dry powder pigment in the
liquid coating upon adding the packet to the liquid coating" as recited in
claim 1. Br. 9. Acknowledging that Shull "teaches that the envelope is
dissolved in water that comprises the carrier with little or no other
constituent components," Appellant argues that"[ w ]ater is essentially a pure
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carrier in the context of Shull without significant amounts of other chemical
constituents that would compete for the carrier, thereby making full
dissolution and dispersal in the carrier more certain" and that "it is unknown
whether the packet would completely dissolve in a liquid coating given that
the packet material must compete with other components for the carrier." Id.
at 9-10. Appellant's argument, unsupported by factual evidence, is not
commensurate in scope with the plain language of claim 1 which does not
exclude water, nor does it recite "significant amounts of other chemical
constituents." In any event, Appellant does not structurally distinguish the
prior art from the system recited in claim 1.
Appellant next argues that Sugimoto does not teach or suggest a
"packet constructed from a material dissolvable in the liquid coating" and
"the packet being dissolvable in the liquid coating to completely release and
disperse the dry powder pigment in the liquid coating upon adding the
packet to the liquid coating" as recited in claim 1. Br. 11, 12. Appellant
argues that because Sugimoto's packet "is constructed from 'a fibrous
substance and a carboxyl-containing polymer to disintegrate the packaging
material,"' "the packaging material disintegrates presumably due to the
physical manipulation of the cement admixture." Id. at 11. The specification,
however, provides that "the material may be dissolvable in a water-based
coating, a solvent based coating or a hybrid of water/solvent based coatings
106" and that such material may broadly include "a polyvinyl alcohol water
soluble film ... or other type of material." Spec. ,r 20. Appellant has not
shown that the recited "material dissolvable in the liquid coating" excludes
the prior art material. Appellant's argument is also not supported by factual
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evidence and therefore does not identify reversible error in the Examiner's
finding.
Appellant argues that Sugimoto does not teach or suggest a "dry
powder pigment being pretreated to disperse in the liquid coating" 5 because
"there is no need to pretreat the coloring agents" in the prior art. Br. 11.
Appellant, however, does not address the Examiner's finding that Shull
teaches or suggests this claim limitation. Compare id., with Final Act. 15
(finding that "Shull discloses that the dry powder pigments may be any
commonly available, inert dry powder, of a fineness that substantially all
passes through a 100 mesh sieve (read on pretreatment), having color
characteristics suitable for producing a desired color when combined with a
gypsum finish plaster, or other inorganic cementitious material"). Because
Appellant does not identify reversible error in the Examiner's findings, we
are not persuaded by Appellant's argument.
Appellant also argues that Sugimoto does not teach or suggest "the
packet being dissolvable in the liquid coating to completely release and
disperse the dry powder pigment in the liquid coating upon adding the
packet to the liquid coating" because "it is entirely unreasonable to interpret
wet cement as a liquid coating as set forth in the Office Action." Br. 12. As
noted supra, such "mere statements of disagreement ... do not amount to a
developed argument." SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d
5 The claim language "the dry powder pigment being pretreated to disperse
in the liquid coating" is unclear as to whether it is directed to a system or a
process. Should prosecution continue, an inquiry may be made whether the
claim "is so unclear as to be ambiguous about whether it covers a process or
a machine [which] might be invalid" under 35 U.S.C. § 112, second
paragraph. In re Nuijten, 500 F.3d 1346, 1354 n.3 (Fed. Cir. 2007).
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1312, 1320 (Fed. Cir. 2006). As a result, no reversible error has been
identified in this aspect of the Examiner's analysis.
Appellant next argues that a skilled artisan would not have combined
the prior art teachings. Br. 16. "Appellant asserts that the full teaching of
Sugimoto would lead one to believe that the packet in question was meant
for wet cement that is made up of significant particular matter and not a
liquid that includes water" whereas "the package of dye [in Shull] is applied
to water to make liquid tinter that is then used to mix in with dry powder
plaster." Id. at 16, 17.
Appellant's argument is not commensurate in scope with claim 1
which does not exclude particular matter from the recited "liquid coating".
Furthermore, the Examiner's finding remains undisputed that the film of
Shull's packet is water soluble. Compare Br. 16-17, with Final Act. 4.
"[W]hen a patent claims a structure already known in the prior art that is
altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result." KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007) (citing United States v.
Adams, 383 U.S. 39, 50-51 (1966)). In this case, the evidence in the record
supports the Examiner's finding that the recited components/structures are
known in the prior art. Appellant's argument that the Examiner "ignores the
fact that the chemical properties of the plaster of Shull and/ or the cement of
Sugimoto are very different than the properties of a liquid coating" (id. at
17) and other assertions do not structurally distinguish the prior art and do
not identify reversible error in the Examiner's findings. See e.g., Br. 36
(merely presenting a question "how can it be that cement has 'a substantially
similar structure and chemical composition' as liquid coating" without
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identifying reversible error in the Examiner's findings based on the
interpretation of "liquid coating" and the prior art disclosure).
With regard to Appellant's argument that the Examiner engaged in
impermissible hindsight, Appellant has not adequately explained why the
various cases and law review articles cited by Appellant ( see, e.g., Br. 21-
26) are applicable to the facts of this case to show that the rejection
"include[s] knowledge gleaned only from applicant's disclosure." In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) ("Any judgment on
obviousness is in a sense necessarily a reconstruction based upon hindsight
reasoning, but so long as it takes into account only knowledge which was
within the level of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant's disclosure,
such a reconstruction is proper."). We are accordingly unpersuaded that the
Examiner engaged in impermissible hindsight here.
In addition, "Appellant asserts that the result of the structures of
claims 1, 4--10, 31 and 35--41 are not predictable and that this factor points
toward the use of impermissible hindsight." Br. 28. Appellant supports this
assertion with statements such as "it was unknown whether other
constituents in a liquid coating such as resin, pigment, or other polymeric
additives might supplant the carrier such that the packet material was not
fully exposed to the carrier" (id. at 29) which is not only unsupported by
factual evidence (Johnston, 885 F.2d at 1581 ("Attorneys' argument is no
substitute for evidence.")) but is also commensurate in scope with the claim
language which does not require the liquid coating to include such
constituents as resin. Appellant's remaining arguments do not show that the
art is in fact unpredictable and amount to general assertions without factual
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support. See Br. 30 (stating, for example, that "whether the chemicals that
make up the packet material might damage some of the pretreatment for
some particles of the pigment resulting in agglomeration or making such
particles at least partially insoluble" and that "it was not known whether the
chemical constituents of a coating would interfere with the dispersion of the
dry powder pigments).
Appellant's assertion that "there is significant incompatibility"
between the references is also unpersuasive. Br. 32. To the extent that
Appellant is arguing that the references are non-analogous art, the argument
addresses neither "( 1) whether the art is from the same field of endeavor,
regardless of the problem addressed" nor "(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 Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992).
Appellant's argument that the prior art references are not considered
as a whole is again based on the premise that neither reference teaches or
suggests a liquid coating. Br. 35. This argument has been addressed supra as
unpersuasive.
Rejection of Claims 4, 5, and 37-40
The Examiner rejects claims 4, 5, and 37--40 as a group finding that a
"prior art structure is capable of performing the intended use" recited in the
claims. Final Act. 5, 9.
Claims 4 and 5, dependent of claim 1, recite "wherein the material
substantially dissolves in the predefined volume of the liquid coating in less
than 3 minutes of stirring by hand" and "wherein the material substantially
dissolves in the predefined volume of the liquid coating after less than
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approximately 3 minutes of agitation using an industrial agitation
apparatus," respectively.
"The discovery of a new property or use of a previously known
composition, even when that property and use are unobvious from the prior
art, can not impart patentability to claims to the known composition." In re
Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). The Examiner rejects claims 4
and 5, based on the structural similarities between the recited system and the
prior art. See Final Act. 4; see also Spec. ,r 20 (stating that "the material may
be dissolvable in a water-based coating, a solvent based coating or a hybrid
of water/solvent based coatings 106" and that such material may broadly
include "a polyvinyl alcohol water soluble film ... or other type of
material"). To the extent that the Examiner committed harmless error in
rejecting claims 4 and 5 based on the premise of intended use, the record
before us does not support a structural distinction between the recited
"material dissolvable in a liquid coating" and the prior art. On this basis, we
sustain the rejection of claims 4 and 5 over Shull and Sugimoto and we
sustain the rejection of claims 4 and 5 over Shull, Sugimoto, and Binns.
Claims 3 7 and 40, dependent of claims 31 and 1, respectively, recite
"wherein the liquid coating comprises a carrier that is taken from a group of
carriers consisting of solvent or oil." To the extent that the Examiner
committed harmless error in rejecting claims 37 and 40 based on the premise
of intended use, the record shows that Binns describes that "solvent-based
paint or coating" is known in the art. Binns 1: 12-13. We sustain the
rejection claims 37 and 40 over Shull, Sugimoto, and Binns.
Claim 3 8, dependent of claim 1, recites "wherein the liquid coating
further comprises a paint." "[T]he patentability of apparatus or composition
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claims depends on the claimed structure, not on the use or purpose of that
structure." Catalina Mktg. Int'!, Inc. v. Coolsavings.com, Inc., 289 F.3d 801,
809 (Fed. Cir. 2002). Whether the recited liquid coating purports to be a
paint, the record before us does not support a structural distinction between
the recited "liquid coating," and we accordingly sustain the rejection of
claim 38 over Shull and Sugimoto and the rejection of claims 38 over Shull,
Sugimoto, and Binns. 6
Claim 39, dependent of claim 1, recites "wherein the liquid coating
includes an initial amount of preexisting pigment imparting an initial color
thereto." To the extent that the Examiner committed harmless error in
rejecting claim 3 9 based on the premise of intended use, the record shows
that Binns describes that "[p ]igments impart color to both solvent and latext
paints and coatings" is known in the art. Binns 1 :32-33. We sustain the
rejection claim 39 over Shull, Sugimoto, and Binns. 7
Rejection of Claim 41 8
Claim 41 depends from claim 1 and further recites: "wherein the dry
powder pigment is pretreated using a dry dispersion technique that renders a
surface area of a plurality of particles of the dry powder pigment capable of
6 Because we sustain the rejection of claim 38 over Shull, Sugimoto, and
Binns, we decline to reach the rejection of claim 38 over Shull and
Sugimoto.
7 Because we sustain the rejection of claim 39 over Shull, Sugimoto, and
Binns, we decline to reach the rejection of claim 39 over Shull and
Sugimoto.
8 Because Appellant does not specify whether the argument is directed to the
rejection of claim 41 over Shull and Sugimoto or the rejection over Shull,
Sugimoto, and Binns, we address both rejections together here. Br. 14--15;
see also 37 C.F.R. § 4I.37(c)(l)(iv).
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being substantially surrounded by a vehicle of the liquid coating, where the
dry powder pigment is insoluble before pretreatment."
Appellant argues that the Examiner reversibly erred in rejecting claim
42 because "the pretreatment specified in claim 41 is not some nebulous
concept of pretreatment in the abstract" without explaining why the prior art
pigment is patentably distinguished from the claim - reciting a system -
based on structure. Br. 15. We further note that the specification provides
that the pigment "may comprise organic and inorganic pigments" such as
"titanium dioxide" (Spec. ,r 17) which the Examiner finds is disclosed in the
prior art. Final Act. 4 ( citing Shull 1 :48-57 and Sugimoto for various
pigments including titanium oxide). The Examiner's findings here are
therefore further supported by the specification.
Rejection of Claim 259
Appellant argues that the Examiner reversibly erred in rejecting claim
25 because "Saunders is simply wrong" by describing that the prior art
inorganic pigment would disperse in water. Br. 39. Appellant's argument is
misplaced because it does not address the Examiner's rejection which uses
Saunders "to show that label is generally used in the art." Final Act. 21.
Because the argument does not address the findings in support of the
rejection, we are unpersuaded by them.
With regard to Mr. Coughlin's declaratory evidence, because it is
premised on the prior art "[a]t the time of the filing of the Saunders patent"
(Deel. ,r 12) and does not address whether the prior art, in light of the
9 Because Appellant does not argue the rejection of claims 11-13, 26, and
28-30 over Shull, Sugimoto, and Saunders separately, they stand or fall with
claim 25 for the rejection over Shull, Sugimoto, and Saunders. Br. 38-52;
see also 37 C.F.R. § 4I.37(c)(l)(iv).
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knowledge of a person of ordinary skill in the art "at the time of the
invention," teaches or suggests the subject matter of the properly supported
and construed claims, Unigene Labs., Inc., 655 F.3d at 1360 (providing the
test for analyzing obviousness), we are unpersuaded by the declaratory
evidence for this additional reason.
The additional arguments with regard to Saunders' teachings likewise
fail to address the Examiner's factual findings in support of the rejection. Br.
39--40. We are accordingly unpersuaded by them.
Appellant's arguments with regard to the rationale to combine the
references mirror those raised supra which we have addressed. Compare Br.
42-52, with id. at 15-36. With regard to the additional arguments that
Saunders does not teach structure similar to that recited (id. at 43) and a
quantity of the liquid coating (id. at 46), we again note that these arguments
do not identify error in the Examiner's findings and rational analyzed in
detail supra.
Appellant does not present separate arguments for the rejection of
claims 11-13, 25, 26, and 28-30 over Shull, Sugimoto, Saunders, and Binns.
Br. 69-70. The rejection is sustained accordingly.
Rejection of Claims 27 & 32
Appellant's arguments with regard to dependent claims 27 and 32 are
solely based on the premise that the additional references (Hanson and
Plunguian, respectively) do not teach or suggest the limitations recited in
claim 25 or claim 31. Br. 52, 53, 70, 71. Based on our affirmance of the
rejections of claims 25 and 31, we sustain the rejections of claim 27 based
on Shull, Sugimoto, and Hanson as well as Shull, Sugimoto, Binns and
Hanson and the rejection of claim 32 based on Shull, Sugimoto, and
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Plunguian as well as Shull, Sugimoto, Binns and Plunguian accordingly. See
37 C.F.R. § 4I.37(c)(l)(iv).
Rejection of Claim 1 over Shull, Sugimoto, and Binns 10
Appellant argues that the Examiner reversibly erred in rejecting claim
1 over Shull, Sugimoto, and Binns because "Binns teaches creating liquid
tinters by combining insoluble pigments with chemicals that are physically
processed in a liquid state so that the respective insoluble pigments will
disperse in a liquid." Br. 56 (emphases removed). Appellant reasons the
liquid tinters created in Binns "cannot be placed in dissolvable packets as
they would dissolve the packets from the inside." Id. at 58 (emphases
removed).
Appellant's argument is not persuasive because it does not sufficiently
explain how it applies to a particular limitation of claim 1. "It is not the
function of this court [ or this Board] to examine the claims in greater detail
than argued by an appellant, looking for [patentable] distinctions over the
prior art." In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991).
The argument is not persuasive also because it does not address the
Examiner's findings in support of the rejection - in particular - that Binns
teaches that "to properly be dispersed, pigments must be wetted,
deaggregated and deagglomerated in the paint vehicle." Final Act. 8-9
( citing Binns 1 :44--2:27), 24--25 (repeating the explanation).
Appellant's arguments with regard to the rationale to combine the
references mirror those raised supra which we have addressed. Compare Br.
10 Because Appellant does not argue the rejection of claims 6-10, 31, 35, 36,
and 42 over Shull, Sugimoto, and Binns separately, they stand or fall with
claim 1 for the rejection over Shull, Sugimoto, and Binns. Br. 54--69; see
also 37 C.F.R. § 4I.37(c)(l)(iv).
17
Appeal2018-006073
Application 11/691,278
58-71, with id. at 15-36. With regard to the additional arguments that Binns
does not teach structure similar to that recited (Br. 60) and a quantity of the
liquid coating (id. at 63), we again note that these arguments do not construe
"liquid coating" to preclude liquid tinter, nor identify error in the Examiner's
findings as analyzed in detail supra.
DECISION
The Examiner's rejection of claims 41 and 42 are rejected "under 35
U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), first paragraph, as failing to
comply with the written description requirement" (Final Act. 2) is sustained.
The obviousness rejections of claims 1, 4--13, 25-32, 35, 36, 37, and
40-4 2 are sustained.
The obviousness rejection of claims 38 and 39 over Shull, Sugimoto,
and Binns is sustained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
18