12520889 (P.T.A.B. Jun. 30, 2016)

Ex Parte Lehmann et al

Patent Trial and Appeal BoardJun 30, 2016

12520889 (P.T.A.B. Jun. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/520,889 0612312009 4743 7590 07/05/2016 MARSHALL, GERSTEIN & BORUN LLP 233 SOUTH WACKER DRIVE 6300 WILLIS TOWER CHICAGO, IL 60606-6357 FIRST NAMED INVENTOR Urs Lehmann 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. 32471123591 1885 EXAMINER KOSACK, JOSEPH R ART UNIT PAPER NUMBER 1626 NOTIFICATION DATE DELIVERY MODE 07/05/2016 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 Ex parte URS LEHMANN and DANIEL HEIZLER Appeal2014-006302 Application 12/520,889 1 Technology Center 1600 Before LORA M. GREEN, JEFFREY N. FREDMAN, and KRISTI L. R. SA WERT, Administrative Patent Judges. SA WERT, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134(a) from the rejection of claims 1, 3, 4, 6-8, and 21. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. Appellants identify CIBA Corporation as the real party in interest. Br. 3. Appeal2014-006302 Application 12/520,889 STATEMENT OF THE CASE Claims 1, 3, 4, 6-8, and 21 are pending and stand rejected under 35 U.S.C. Â§ 103(a) for obviousness over Kato2 in view ofBleikolm3. We choose independent claim 1 as representative. See 37 C.F.R. Â§ 41.37( c )(1 )(iv). Claim 1 provides: 1. A method of using colorless IR absorbers comprises: a) treating a material with compounds of formula I p F') ~14 Â·i.1, R S â€¢I NJI . ...:..:, / Â·Â·:ocÂ·Â· N xp=(. .. I . M .1 .>=x~ 1 . . / ' ; .. N t.-- ~ N I v ..:.. ' RÂ· .. ~Â· R .. ~ ~ ,> I wherein Mis Ni, Pd, Pt, X1, and X2 are each independently of the others sulfur or oxygen, Ri, R2, R3, and R4, are each independently of the others hydrogen, NR7Rs, unsubstituted or substituted C1-C1s alkyl, C1- C1s alkyl wherein the alkylene chain is interrupted with oxygen, unsubstituted or substituted C1-C1s alkenyl, unsubstituted or substituted aryl, unsubstituted or substituted arylalkyl or unsubstituted or substituted heteroarylalkyl, R7 and Rs, each independently of the other, being unsubstituted or substituted 2 Eiichi Kato, JPO Publication No. 2004/045653 A (published Dec. 2, 2004) ("Kato"). 3 Anton Bleikolm, et al., U.S. Patent No. 6,926,764 B2 (issued Aug. 9, 2005) ("Bleikolm"). 2 Appeal2014-006302 Application 12/520,889 C1-C1s alkyl, unsubstituted or substituted aryl, unsubstituted or substituted arylalkyl or unsubstituted or substituted heteroary lalky 1, wherein the material is a security print, an invisible and IR readable bar code, a laser-welded plastic, a dried print, a fixed toner on paper, a laser marked plastic, or a heated perform, optionally a further IR absorber; and b) using the treated material of a) for security printing, invisible and IR readable bar codes, laser-welding of plastics, drying of print, fixing of toners on paper, laser marking, and heating of plastics preforms. FINDINGS OF FACT 1. The claimed invention is directed to methods of using certain dithiolene metal complexes as colorless infrared ("IR") absorbers. Spec. 1 (11. 2-3). The Specification defines "colorlessness" as "minimum inherent color." Spec. 1 (1. 22). 2. IR absorbers are known in the art to have a wide range of applications in various technical fields, including: security printing (bank notes, credit cards, identity cards, passports etc.), invisible and IR readable bar codes, the laser-welding of plastics, the curing of surface-coatings using IR radiators, the drying and curing of print, the fixing of toners on paper, optical filters for PDPs (plasma display panels), laser marking, the heating of plastics preforms etc. Spec. 1 (11. 5-10). 3 Appeal2014-006302 Application 12/520,889 3. The Specification states that, although IR absorbers were known in the prior art, "virtually all of them have an absorption in the VIS range of the spectrum (from 400 to 700 nm)." Spec. 1 (11. 25-26). In other words, prior art IR absorbers were not entirely colorless because they absorbed some visible light as well as infrared light. Id. 4. The Specification states that the disclosed dithiolene metal complexes "are appreciably superior to the known IR absorbers," "[e]specially in respect of colorlessness." Spec. 1 (11. 31-32). 5. Kato discloses a light filter comprising organometallic complexes having the following formula, wherein Mis Ni, R1 is---CH3, and R2 is ---CH3: Kato (i-fi-f 5, 22 (Table 1 )). Kato teaches that the compounds have "near-infrared absorptivity" and act as a light filter. Id. (i-f 5). Specifically, Kato describes the compounds as having "big absorption in a near-infrared ray range," and as providing "high visible light transmissivity." Id. (i-f 4). 6. Kato specifically teaches treating a transparent substrate with the organometallic complexes to create a light filter for an image display device, such as a liquid crystal display (LCD) or plasma display panel (PDP). Kato (i-fi-f 25, 81 ). Kato fails to teach coating materials such as 4 Appeal2014-006302 Application 12/520,889 a security print with the organometallic complexes. Final Act. 4. 7. Bleikolm discloses inks, including IR absorbing inks. Bleikolm (Abstract). Bleikolm states that IR absorbing inks are well known in the art "for the printing of machine readable markings such as text, numbers or barcodes, as well as for the printing of anti-counterfeit markings which help to authenticate articles carrying such inks." Id. (col. 1, 11. 11-15). Bleikolm provides examples of a method for security printing, in which an initially colorless dye is printed and then becomes visible when exposed to IR radiation. Id. (col. 10, 1. 21---col. 12, 1. 11 ). 8. Dr. Lehmann filed a Declaration under 37 C.F.R. Â§ 1.132 on April 12, 2013. The Declaration provides test results from a comparison of the claimed dithiolene-metal complexes with prior-art IR absorbers. Deel. 2--4. The "Laser Welding" test shows that, when incorporated into polycarbonate plastic, the dithiolene-metal complexes of Examples 1 and 2 of the Specification are almost colorless, whereas the prior-art IR absorbers "are distinctly colored." Id. at 2-3. Similarly, the "Security Printing" test shows that inks containing the claimed dithiolene-metal complexes appear "almost colorless to slightly beige" when printed onto banknote paper. Id. at 3--4. But, the prior-art IR absorber appears "greenish" when used in a printing ink, "which is not acceptable for banknote printing." Id. at 4. 9. Dr. Lehmann concludes that the "above tests show that the compounds of the present invention are much more suitable for use in the claimed applications than other state of the art IR absorbers." Deel. 4. 5 Appeal2014-006302 Application 12/520,889 LEGAL STANDARD A claimed invention is unpatentable if the differences between it and the prior art are "such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art." 35 U.S.C. Â§ 103(a) (pre-AIA). To assess whether the subject matter would have been obvious, the Board follows guidance in Graham v. John Deere Co., 383 U.S. 1 (1966) andKSRint'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007). "Where a skilled artisan merely pursues 'known options' from 'a finite number of identified, predictable solutions,' the resulting invention is obvious under Section 103." In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1070 (Fed. Cir. 2012) (quotingKSR, 550U.S. at421). DISCUSSION On appeal, the Board "reviews the obviousness rejection for error based upon the issues identified by appellant, and in light of the arguments and evidence produced thereon." Ex parte Frye, 94 USPQ2d 1072, 1075-76 (BP AI 2010) (Precedential). We address each issue raised by Appellants below. (1) Declaration We are unable to agree with Appellants that the test results presented in the Declaration favor non-obviousness. At the outset, we note that evidence of unexpectedly superior results may be used to rebut a prima facie case of obviousness. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1369 (Fed. Cir. 2007). But, "the burden of showing unexpected results rests on he who 6 Appeal2014-006302 Application 12/520,889 asserts them .... [I]t is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference." In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). We agree with the Examiner that Appellants have not adequately explained how the colorlessness property of the claimed dithiolene-metal complexes is, in fact, unexpected. See Ans. 17-18. Put differently, although the Declaration shows that the claimed dithiolene-metal complexes are superior with respect to colorlessness when compared to certain prior-art IR absorbers, the Declaration does not show that colorlessness would have been unexpected to the skilled artisan in light of the teachings of Kato. Kato teaches that the same dithiolene-metal complexes have "near-infrared absorptivity" and act as a light filter. FF5. Kato also teaches that the dithiolene-metal complexes have "high visible light transmissivity while absorbing IR rays.'' Ans. 5 (citing Kato ,-r 4); see also FF5. Thus, as the Examiner explained, a person having ordinary skill in the art would have understood that Kato's compounds are "virtually colorless in visible light but visible when exposed to IR light," and that "the results provided in the declaration ... are more expected than unexpected." Id. Appellants have not provided a persuasive response to the Examiner's reasoning. Appellants argue that Kato is directed to a different purpose (i.e., color filters for plasma displays) than the compounds of the claimed invention. Br. 12. This argument is not persuasive because, as the Examiner explained, the rejection is based on a combination of references, rather than Kato alone. Ans. 6; see also In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-obviousness cannot be established by attacking references 7 Appeal2014-006302 Application 12/520,889 individually where the rejection is based upon the teachings of a combination of references."). Appellants also argue that Kato "does not specifically disclose the colorlessness feature of the disclosed near IR absorber compounds, nor does Kato emphasize the significance of this feature." Br. 13. This argument is also not persuasive. As the Examiner explained, the prior art must be viewed from the perspective of a person having ordinary skill in the art. Ans. 5---6. And here, the ordinarily-skilled artisan would recognize that Kato' s compounds exhibit high visible light transmissivity while absorbing IR rays, and therefore could be used in the prior art processes taught by Bleikolm. Id.; see also In re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012) ("A reference must be considered for everything that it teaches, not simply the described invention .... "). Other than stating that the "advantageous properties of the compounds of Kato were unknown," Br. 13, Appellants fail to provide any evidence or sound scientific reasoning rebutting the Examiner; s finding that a skilled artisan would recognize that Kato' s compounds exhibit colorlessness in visible light. Finally, we do not agree with Appellants' argument that the Examiner's position about the Declaration rendered the record unclear. See Br. 9-11 & 13-14. The Examiner stated that the Declaration was not persuasive because it does not show how the results were unexpected in light of Kato. Ans. 5. Merely showing superior results, as Appellants appear to suggest, does not necessarily rebut a prima facie case of obviousness unless those superior results would have been unexpected as well. Klosak, 455 F.2d at 1080; see also In re Corkill, 771 F.2d 1496, 1501 (Fed. Cir. 1985) ("A greater than expected result is an evidentiary factor pertinent to the legal 8 Appeal2014-006302 Application 12/520,889 conclusion of the obviousness vel non of the claims at issue."); In re De Blauwe, 736 F.2d 699, 706 n. 8 (Fed. Cir. 1984) ("A proper showing of unexpected results will rebut a prima facie case of obviousness."). For these reasons, we cannot find that Appellants carried their burden of showing unexpected results. (2) Bleikolm Next, Appellants criticize Bleikolm for disclosing "completely different IR absorber compounds," "ambiguous working examples," and for failing to disclose the "significant feature of colorlessness that is possessed by the recited compounds." Br. 14--15. But the Examiner did not rely on Bleikolm for a teaching of claimed colorless IR-absorber compounds; rather, the Examiner relied on Bleikolm for its security-printing methods. Ans. 3- 4. Thus, Appellants' arguments do not persuade us of Examiner error. Moreover, Appellants do not explain how Bleikolm's methods are, indeed, ambiguous. Appellants also point out that Bleikolm fails to teach the use of IR absorbers in laser welding. Br. 15. We note that "[t]he name of the game is the claim." In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (quotation omitted). And for claims containing a Markush group, the entire group is considered "disclosed by the prior art if one alternative in the Markush group is in the prior art." Fresenius USA, Inc. v. Baxter Int'!, Inc., 582 F.3d 1288, 1298 (Fed. Cir. 2009). Here, there is no dispute that Appellants' claim recites a Markush group encompassing not only laser welding but also the security-printing methods taught by Bleikolm. FF7. Thus, Appellants' argument lacks merit. 9 Appeal2014-006302 Application 12/520,889 Finally, Appellants argue that "it is unlikely that one skilled in the art would look to Bleikolm, after reading Kato" because "the disclosed compounds and applications of use are completely different." Br. 16. We interpret Appellants' statement as an argument that Bleikolm does not represent analogous art. Prior art is analogous if ( l) "the aii is from the same field of endeavor, regardless of the problem addressed," or (2) "if the reference is not within the field of the inventor's endeavor, ... the reference still is reasonably pertinent to the particular problem with which the inventor is involved." Jn re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992). The error in Appe11ants' argurnent is that the analogous-mi inquiry looks to whether the disputed prior-art reference is analogous to the clainied invention, not to whether the prior-art reforences are necessarily analogous to one another. Id at 659; see also In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) ("References within the statutory terms of 35 U.S.C. Â§ 102 qualify as prior art for an obviousness determination only when analogous to the claimed invention."). And here, Bleikolm is reasonably within the same field of Appellants' endeavor, i.e., the use of IR-absorbing cornpounds for security printing. See FF2 & FF7. \Ne also note that Kato is reasonably pe1iinent to the use of IR-absorbing compounds that provide '"high visible light trnnsmissivity." FF5. Kato also teaches an optical filter exhibiting the propeiiies of "large absorption in a near infrared light area/' "chemically stable," and "visible light transmitting performance." Kato (Abstract). Thus, i\.ppellants~ argument is not persuasive. 10 Appeal2014-006302 Application 12/520,889 (3) Motivation to Combine Appellants argue that the Examiner's rationale for combining Kato and Bleikolm is "unclear," and represents a "generalized conclusion" based on "impermissible hindsight." Br. 15-16. We disagree. In our view the Examiner articulated a reasoned explanation as to why a person of ordinary skill in the art would have combined the prior-art references to achieve the claimed invention. Specifically, the Examiner explained that an ordinarily-skilled artisan would have been motivated to use Kato' s disclosed compounds in the security-printing method of Bleikolm because "a person of ordinary skill in the art would have recognized that the compounds of Kato are colorless, yet absorb IR light, and could be used in a security printing process such as that set forth by Bleikolm et al." Ans. 6 (quotation omitted). A preponderance of the evidence supports the Examiner's rationale. Kato teaches compounds that have "high visible light transmissivity'; and "big absorption in a near- infrared ray range." FF5. And Bleikolm teaches that IR absorbing compounds can be used "for the printing of machine readable markings such as text, numbers or barcodes, as well as for the printing of anti-counterfeit markings which help to authenticate articles carrying such inks." FF7. Thus, as the Examiner's explained, "the person of ordinary skill in the art would recognize that a compound that absorbs in the IR region and not the visible region could be readily used for applications where IR light is used such as security printing and IR readable bar codes." Final Act. 2. Appellants also appear to argue that the motivation to use Kato' s compounds in Bleikolm' s methods must come from the "disclosures of the prior art." Br. 16. But, as the Federal Circuit has explained, the need for an 11 Appeal2014-006302 Application 12/520,889 explicit analysis does not require record evidence of an explicit teaching of a motivation to combine in the prior art: [T]he analysis that "should be made explicit" refers not to the teachings in the prior art of a motivation to combine, but to the court's analysis .... Under the flexible inquiry set forth by the Supreme Court [in KSR], the district court therefore erred by failing to take account of 'the inferences and creative steps,' or even routine steps, that an inventor would employ and by failing to find a motivation to combine related pieces from the prior art. Ball Aerosol v. Limited Brands, 555 F.3d 984, 993 (Fed. Cir. 2009). Thus, contrary to Appellants' argument, there is no requirement that Kato expressly teach that the disclosed compounds could be used in Bleikolm's methods. Appellants have not sufficiently rebutted the Examiner's reasoned analysis. Thus, we reject Appellants' argument that the Examiner has failed to articulate a sufficient reason to combine the prior art references. SUMMARY We affirm the rejection of claims 1, 3, 4, 6-8, and 21under35 U.S.C. Â§ 103(a) on appeal. 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. Â§ 1.136(a). AFFIRMED 12