Ex Parte Lewis et al

Patent Trial and Appeal Board

Oct 31, 2016

13548524 (P.T.A.B. Oct. 31, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/548,524 07/13/2012 Mark D. Lewis 10007421A1 4813
24959 7590 10/31/2016
PPG Industries, Inc.
IP Law Group
One PPG Place
39th Floor
Pittsburgh, PA 15272
EXAMINER
CAMERON, ERMA C
ART UNIT PAPER NUMBER
1715
MAIL DATE DELIVERY MODE
10/31/2016 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 MARK D. LEWIS, WALTER J. ROBERTSON,
MARY KIMBRO, and NATHAN GOODNOW
____________

Appeal 2015-007101
Application 13/548,524
Technology Center 1700
____________

Before KAREN M. HASTINGS, CHRISTOPHER C. KENNEDY, and
JENNIFER R. GUPTA, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 request our review under 35 U.S.C. § 134(a) of a decision
of the Primary Examiner to reject claims 1–8 and 10 under 35 U.S.C.
§ 103(a) based on at least Gibson et al. (US Pub. No. 2006/0181707 Al,
published Aug. 17, 2006) (“Gibson”).2 The Examiner also rejected claim 1
under 35 U.S.C. § 112 as failing to comply with the written description
requirement.

1 The Real Party in Interest is stated to be PPG Industries Ohio, Inc. (Br. 1).
2 The Examiner also applied Prakash et al. (WO 2008/103405 Al, published
Aug. 28, 2008) (“Prakash”) in combination with Gibson to reject dependent
claims 9 and 11 under 35 U.S.C. § 103(a) (Non-Final Action 4). Appellants
rely upon the argument for claim 1 and do not add any additional arguments
to address this rejection (Br. 7).
Appeal 2015-007101
Application 13/548,524

2
We have jurisdiction under 35 U.S.C. § 6.
Claims 1 is the sole independent claim on appeal (emphasis added to
highlight key contested limitation):
1. A color matching method for coatings comprising:
providing a target formulation for a coating composition including
types and target amounts of components of the coating composition to be
included in the target formulation;
automatically dispensing the types of the components of the target
formulation into a container to provide a sample coating composition and
automatically measuring the amount of each of the components of the
sample coating composition dispensed into the container;
comparing the measured amount of each of the components with the
target amount of each of the components;
applying the sample coating composition to a test panel substrate and
curing the sample coating composition to form a sample coating;
comparing characteristics of the sample coating with characteristics of
a coating produced from the target formulation to determine whether there is
an acceptable match of such characteristics; and
correlating any differences between the characteristics of the sample
coating and the coating produced from the target formulation with the
comparison between the measured amount of each of the components and
the target amount of each of the components to thereby determine whether
changes in the amounts of the components of the sample coating are
necessary to match the characteristics of the sample coating to the coating
produced from the target formulation.

ANALYSIS
The § 112 Rejection
For an applicant to comply with the 35 U.S.C. § 112, first paragraph,
written description requirement, the applicant’s Specification must “‘convey
with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention.’” Carnegie Mellon
Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008)
Appeal 2015-007101
Application 13/548,524

3
(quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir.
1991)).
After review of the respective positions provided by Appellants and
the Examiner, we find that a preponderance of the evidence supports
Appellants’ position that the original disclosure provides support for the
claimed term “automatically measuring” (Br. 3–5; Spec. e.g., ¶¶ 12, 15, 28).
As Appellants explains, the Specification describes in detail an automated
coating system and method (Br. 5).
The Examiner’s position is that while the Specification supports
automatically dispensing the components, it “does not say that the amounts
are automatically measured” and thus, “‘automatic measuring’” is new
matter (Non-Final Action 3; see also Ans. 2).
However, a preponderance of the evidence supports Appellants’
position that one of ordinary skill in the art would have understood that the
originally filed Specification encompasses automatically measuring the
components (Br. 5). The claim need not use the same words as the
specification; it is enough that one of ordinary skill in the art would
recognize that the inventor invented what is claimed. Union Oil Co. of Cal.
v. Atlantic Richfield Co., 208 F.3d 989, 997 (Fed. Cir. 2000).
Accordingly, we reverse the Examiner’s § 112, first paragraph
rejection of claim 1 on appeal.

The § 103 Rejection
Upon consideration of the appeal record, including the Appellants’
position in this appeal as set forth on pages 6–7 of the Appeal Brief, we
affirm the Examiner’s rejection for essentially the reasons stated by the
Appeal 2015-007101
Application 13/548,524

4
Examiner (Non-Final Act. 4; Ans. 2, 3). All claims stand or fall with
independent claim 1.
It has been established that “the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). Likewise, it is well settled that a reference
stands for all of the specific teachings thereof as well as the inferences one
of ordinary skill in this art would have reasonably been expected to draw
therefrom. See In re Fritch, 972 F.2d 1260, 1264–65 (Fed. Cir. 1992).
Appellants’ sole argument in the appeal brief is that Gibson does not
teach automatically dispensing and measuring the amounts of each of the
components of a sample coating composition as the Examiner has suggested
(Br. 6 and 7). This argument is not convincing of error in the Examiner’s
rejection. Notably, Appellants do not specifically dispute the Examiner’s
determination that it is prima facie obvious to automate a previously known
manual activity, relying on In re Venner, 262 F.2d 91, 95 (CCPA 1958).
(Non-Final Act. 3; see also Ans. 3; Br. generally). We agree with the
Examiner and find “it is well settled that it is not ‘invention’ to broadly
provide a mechanical or automatic means to replace manual activity which
has accomplished the same result.” Venner, 262 F.2d at 95 (citing In re
Rundell, 48 F.2d 958, 959 (CCPA 1931)). Indeed, Gibson exemplifies
automatic color matching computer programs (e.g., Gibson ¶¶ 5–19). One
of ordinary skill would have inferred from Gibson’s description that
measuring the amount of the colorant components was included in the
process described therein. Moreover, Appellants admit in the Background
Appeal 2015-007101
Application 13/548,524

5
of the Invention section in their Specification that it was known to weigh a
coating formula by selecting and manually pouring each component of the
formula into a container on a scale (Spec. 2). Thus, weighing the coating
colorant components was a known prior art step (albeit manually). An
applicant cannot defeat an obviousness rejection by asserting that the cited
references fail to teach or suggest elements which the applicant has
acknowledged are taught by the prior art. Constant v. Advanced Micro-
Devices, Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988) and In re Nomiya, 509
F.2d 566, 571 n.5 (CCPA 1975) (A statement by an applicant that certain
matter is prior art is an admission that the matter is prior art for all
purposes).
Appellants have thus not shown error in the Examiner’s determination
that one of ordinary skill in the art, using no more than ordinary creativity,
would have predictably automated a color matching process as exemplified
in Gibson (including measuring the colorant components as in the admitted
prior art) (generally, Ans.; Br.). As the Supreme Court has noted, “[t]he
combination of familiar elements [or steps] according to known methods is
likely to be obvious when it does no more than yield predictable results.”
KSR, 550 U.S. 398, 416 (2007). Appellants have not come forward with any
credible evidence that the Examiner erred in characterizing the references or
in concluding that the claimed combination of familiar elements/steps for
known purposes would have been obvious.
Accordingly, we affirm the Examiner’s § 103 rejections on appeal.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED