Ex Parte Schmidt et al

Patent Trial and Appeal Board

Aug 26, 2016

13647878 (P.T.A.B. Aug. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/647,878 10/09/2012 Christoph SCHMIDT
23599 7590 08/30/2016
MILLEN, WHITE, ZELANO & BRANIGAN, P,C
2200 CLARENDON BL VD.
SUITE 1400
ARLINGTON, VA 22201
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.
MERCK-3554-COl 7242
EXAMINER
BUCKLEY, AUDREA
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
08/30/2016 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):
docketing@mwzb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte CHRISTOPH SCHMIDT, SABINE SCHOEN, and
TAMIO NOGUCHI 1
Appeal2015-000553
Application 13/647,878
Technology Center 1600
Before ERIC B. GRIMES, TA WEN CHANG, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
TOWNSEND, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to filler
pigments comprising platelet-shaped substrates coated with a layer
containing barium sulfate and at least two metal oxides, which have been
rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
Flaky powders such as mica are known to be used as "starting
materials for the preparation of filler powders which are especially useful in
1 Appellants identify the Real Party in Interest as Merck Patent GMBH.
(Appeal Br. 1.)
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Application 13/647,878
cosmetics." (Spec. 1:7-9.) It is also known to use mica coated with barium
sulfate (BaSQ4) as a base for "pigments" in cosmetics, such as face powders,
"due to their tactile and optical properties." (Spec. 1: 16-18.) Appellants'
Specification notes that those "filler pigments have particular disadvantages
like photoactivity and whitish appearance." (Spec. 1:18-20.) Appellants'
invention seeks "to provide a photostable filler pigment based on platelet-
shaped substrates which shows no gloss, provides good skin-feeling and
natural look." (Spec. 1 :22-24.)
Claims 1-5, 7, 8, 10-13, 15-17, and 21 are on appeal. 2 Claims 1 and
21 are representative and read as follows, but modified to recite the elected
species only: 3
1. A filler pigment comprising a platelet-shaped substrate
coated with barium sulfate and at least two metal oxides and/ or
metal hydroxides of the following layer structure:
Substrate }J atural or synthetic mica
1st layer:
2nd layer:
3rd layer:
(Appeal Br. 7; Final Action 6-7.)
21. The filler pigment according to Claim 1, having the
following layer structure consisting of:
Substrate Natural or synthetic mica
1st layer: BaSQ4
2 Claims 9, 14, and 18-20 are also pending, but stand withdrawn from
consideration. (Advisory Action 1.)
3 Claim 1 was subject to an election of species requirement in an Office
Action dated February 7, 2013. Appellants elected the species recited in
claims 1 and 21, as depicted, in the response filed April 8, 2013.
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2nd layer: Sn02
3rd layer: Ti02
(Appeal Br. 10; Final Action 6-7.)
The following grounds of rejection by the Examiner are before us on
review:
Claims 1--4, 10-13, 15-17, and 21under35 U.S.C. § 103(a) as
unpatentable over Schmidt4 and Noguchi. 5
Claim 5 under 35 U.S.C. § 103(a) as unpatentable over Schmidt,
Noguchi, and Kim. 6
Claims 7 and 8 under 35 U.S.C. § 103(a) as unpatentable over
Schmidt, Noguchi, and Schumacher.7
DISCUSSION
Claim j
The Examiner finds that Schmidt teaches a multilayered pigment that
is a mica substrate on which tin oxide (Sn02) and titanium oxide (Ti02) are
subsequently coated. (Final Action 7-8.) The Examiner recognizes that
Schmidt "does not teach a barium sulfate coating between the mica substrate
and the tin and titanium oxide coatings." (Ans. 8; Final Action 8.) The
4 Schmidt et al., US 2004/0052743 Al, published Mar. 18, 2004.
5 Noguchi et al. US 6,511,536 Bl, issued Jan. 28, 2003.
6 Kim, KR 9103075 B, published May 18, 1991, English abstract retrieved
from Derwent database.
7 Schumacher et al., US 6,773,814 B2, issued Aug. 10, 2004.
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Examiner finds Schmidt teaches barium sulfate may be a filler that can be
mixed with multilayered pigments, however. (Final Action 8.)
The Examiner finds Noguchi teaches "pigments of coated flake
substrates for use in cosmetic applications" and that mica coated with
barium sulfate is an equivalent flake particle to natural or synthetic mica
used in cosmetic applications. (Final Action 8; Ans. 4, 8, 10.)
The Examiner notes that "[b ]oth the Schmidt and Noguchi references
are directed to pigment products comprising a coated platelet-shaped mica
substrate wherein the pigments are useful for cosmetic applications." (Final
Action 8; Ans. 4.) In addition, the Examiner notes that, in both Schmidt and
Noguchi, "pigments are used to control the color/light refraction effects such
that both references are in the same field of endeavor and solve the same
problem of color control via inclusion of pigments in coating combinations."
(Advisory Action 2.) In light of the foregoing, the Examiner concludes "[i]t
would have been prima facie obvious to one of ordinary skill in the art ...
to substitute the barium sulfate coated mica substrate as taught by Noguchi
for the mica substrate taught by Schmidt, with a reasonable expectation of
success." (Final Action 8; Ans. 4.) The Examiner indicates that the
preamble "filler pigment" is not limiting because it "does not appear to
impart any structural difference from a product comprising the claimed
substrate and coatings" (Final Action 7), and that substitution of the barium
sulfate coated mica substrate taught in Noguchi for the mica substrate taught
in Schmidt would have resulted in structure meeting all the limitations of
claim 1. (Final Action 9; Ans. 4.)
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We agree with the Examiner's factual findings and conclusion that it
would have been obvious to substitute a barium sulfate coated mica substrate
for the mica substrate in Schmidt in light of the substrate equivalence
teaching in Noguchi. We do not find Appellants' arguments to the contrary
persuasive because they ignore the relevant combined teachings of the two
references, focusing instead on wholesale incorporation of the teachings
regarding Noguchi's pigments with Schmidt's pigments. (See, e.g., Reply
Br. 2 ("it is the entirety of the pigments in Noguchi ('extender pigments')
which would be combined with a colored pigment, not simply one layer").)
In particular, Appellants argue that Noguchi's pigments are not
analogous to Schmidt's pigments because Noguchi teaches a pigment of low
or no luster and no color, whereas Schmidt's pigment, "containing four or
five high refractive index layers," is "a highly glossy effect pigment with
color flop." (Appeal Br. 3-5.) Appellants also contend that "to the extent
that Noguchi is argued to teach equivalence of titanium dioxide and barium
sulfate, it would only be in a colorless, low luster extender pigment intended
for cosmetics" because in the cosmetic example (Example 3), "the pigment
of Noguchi does not show any color or luster" and it "is always used in
combination with coloring pigment." (Appeal Br. 4.)
Appellants argue that the Examiner's position as to why one of
ordinary skill in the art would make the substitution, i.e., that "Noguchi
'teaches the substrates as equivalently useful (i.e., beneath additional coating
layers) in cosmetic applications[']," is in error because Noguchi's teaching
of a "low luster, colorless filler pigment" is not "to produce comparable
effects" as Schmidt's "high luster effect pigment." (Appeal Br. 5.)
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Appellants further contend that "[ w ]here one of ordinary skill in the art
wants a shiny surface effect with color flop, one would not look to a dull,
low luster pigment for improvement." (Appeal Br. 5.)
Appellants also argue
Even to the extent that the Noguchi pigments are colored,
which does not appear to be the case, they are low luster and
not analogous to the colored pigments of Schmidt. Thus, if one
of ordinary skill in the art were, for some reason, to combine
these references, it would be to add an extender pigment of
Noguchi to the colored cosmetic of Schmidt, but not to replace
any of the layers therein taught to contribute to the particular
effect of Schmidt, high color strength.
(Appeal Br. 4.)
The foregoing arguments all concern combining all ofNoguchi's
pigment filler with Schmidt. That is not the Examiner's rejection. "Noguchi
has been cited for its teaching of acceptable substrate materials for use in
pigment flake particles." (Ans. 9.) As the Examiner found (Final Action 8;
Adv. Act. 2), Noguchi teaches that a barium sulfate-coated mica substrate is
equivalent to a mica substrate for a pigment flake particle that is
subsequently coated with other materials that are involved in light reflection
and are used in cosmetic applications. (Noguchi 2:49-56; 6: 16-51.) That
low luster is achieved by coating either substrate with calcium carbonate
(Noguchi 1: 5-11) or that Noguchi' s cosmetic applications teach addition of
pigment separate from the calcium carbonate-coated substrate (Appeal Br. 3)
does not render the teaching concerning the equivalence of the base
substrates in pigment fillers used for cosmetic applications non-analogous.
It also does not establish that the base substrate of mica or mica coated with
barium sulfate are not "equivalently useful" "to produce comparable effects"
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(Appeal Br. 5); the effects being a substrate coatable with additional
materials and which is useful in cosmetic applications that may or may not
have additional pigment particles. Both Schmidt and Noguchi demonstrate
the use of their pigment fillers with additional pigment particles, and even in
similar cosmetic compositions, e.g., foundation. (See Schmidt i-f 65
(Example A4 "Eyeshadow"), i-f 71 (Example A6 "Shimmering Foundation");
Noguchi 6: 15-51 (Example 3 "Use Examples as Cosmetics," including
"Formulation for Foundation").)
Schmidt teaches that it is the internal structuring of the high-refractive
index oxide layers that provides increased brightness, greater luster and a
more pronounced color flop than prior art multilayer pigments in the prior
art. (Schmidt i-fi-1 6-17.) Noguchi teaches that it is the calcium carbonate
coating and particle size that is responsible for low luster of its filler
particles. (Noguchi 1 :7-9, 2:38--46.) There is nothing in Noguchi
suggesting that the coating of barium sulfate on mica is responsible for the
low luster ofNoguchi's particles, which is the property of the Noguchi
particles that Appellants contend would dissuade one of ordinary skill in the
art from combining Noguchi with Schmidt (Appeal Br. 5). And we disagree
with Appellants that "the present specification teaches ... that the glossy
pigments of Schmidt are rendered unsuitable for their purpose, becoming
low-luster" when combined with a layer of barium sulfate over the mica
flake (Reply Br. 2). The Example pigment filler that includes barium sulfate
in Appellants' Specification is noted to be "bright powder color" (Spec.
17: 1-24) and when it is added to a face powder, that powder is deemed to
provide "a subtle mattifying and light reflecting effect" (Spec. 18:1-19:5
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(emphasis added)). Appellants have not shown that subtle mattifying is the
same thing as low luster. And notwithstanding the foregoing, the pigment
filler composition of Appellants' Specification does not provide the specific
five-layered sequence of coatings on the substrate as set forth in Schmidt
and which sequence is asserted in Schmidt to provide significantly increased
brightness, greater luster, and pronounced color flop (see, e.g., Schmidt i-fi-1
8-20). Thus, we are not persuaded that there is evidence pointing to a
reason to expect that the barium sulfate-coated mica would change the result
achieved with Schmidt's structured high-refractive index oxide layers if one
were to substitute the mica substrate with barium sulfate-coated mica
substrate particle. We agree with the Examiner that there would be a
reasonable expectation of success in substituting a barium sulfate coated
mica for the mica substrate in Schmidt.
In addition to the foregoing, it is not necessary for a finding of
obviousness that Noguchi teaches an improvement in properties of Schmidt.
(Appeal Br. 5.) Rather, it is sufficient that one of ordinary skill in the art
would have expected that barium sulfate coated mica flakes would have
been a coatable substrate with the tin oxide and titanium oxide coatings with
the appropriate structuring that Schmidt teaches achieves the greater luster
and pronounced color flop. Accord KSR Int'! Co. v. Teleflex Inc., 550 U.S.
398, 416 (2007) ("[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.") "Express suggestion to substitute one equivalent for another need
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not be present to render such substitution obvious." In re Fout, 675 F.2d
297, 301 (CCP A 1982).
We also do not find In re Klein, 647 F.3d 1343 (Fed. Cir. 2011),
(Reply Br. 2-3) dictates reversal. In Klein, the Federal Circuit reversed the
Board affirmance of the Examiner's obviousness rejection because the Court
found that the references were not reasonably pertinent to the particular
problem with which the inventor was involved. Klein, 647 F.3d at 1348-52.
The reversal did not tum on whether the art relied upon had different goals
and endeavors from each other (Reply Br. 3). In particular, the Court found
that the "purpose of [three of the references was] to separate solid objects"
and did not demonstrate "a partitioned container that is adapted to receive
water or contain it long enough to be able to prepare different ratios in the
different compartments" and thus the references were not pertinent to the
inventor's goal of "making a nectar feeder with a movable divider to prepare
different ratios of sugar and water for different animals." Id. at 1348-50.
As to the remaining two references, the Court noted that while they were
directed to containers that facilitate mixing substances together, they did not
concern movable dividers or the ability to prepare different ratios and "the
Board did not set forth any reasoning in support of its finding that [those
references were] analogous." Id. at 1350-52. The case did not tum on the
issue presented here-whether Noguchi and Schmidt are in the same field of
endeavor-and thus analogous art that one of ordinary skill in the art would
have considered. As noted above, the Examiner explained that "[b ]oth the
Schmidt and Noguchi references are directed to pigment products
comprising a coated platelet-shaped mica substrate wherein the pigments are
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useful for cosmetic applications." (Final Action 8; Ans. 4.) We agree with
the Examiner. Moreover, as we noted above, both references provide
examples in which the pigment fillers are used in foundations. Thus, the
rejection does not tum on whether "one of ordinary skill ... view[s] all
cosmetics as interchangeable." (Reply Br. 3.) We determine that there is
ample support for the Examiner's implicit conclusion that Schmidt and
Noguchi are in the same field of endeavor, and, thus, are analogous art.
Appellants further argue that Noguchi does not teach one of ordinary
skill in the art whether the mica substrate is coated with barium sulfate prior
to a titanium oxide layer by "[t]he wording 'mica coated with titanium oxide
and with barium sulfate."' (Appeal Br. 5.) This argument is also unavailing
in light of the fact that, as the Examiner noted (Final Action 8), Noguchi
teaches the base substrates that are equivalent for further coating can simply
be "mica coated with barium sulfate" rather than "mica coated with titanium
oxide and with barium sulfate .... " (Noguchi 2:54--55.)
For the foregoing reasons, Appellants do not persuade us that the
Examiner erred in rejecting claim 1 for obviousness over Schmidt and
Noguchi.
Claims 2-5, 7-8, 10-13, and 15-17 have not been argued separately
and therefore fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Claim 21
The Examiner's reasoning for rejecting claim 21 is the same as it is
for claim 1. (Final Action 6-9; Adv. Act. 2; Ans. 3--4.)
Appellants argue that claim 21 uses closed transitional language, and
thus, excludes the presence of calcium carbonate that is included in the
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particle of Noguchi. (Appeal Br. 6.) Appellants, citing In re Jones, 958
F.2d 347 (Fed. Cir. 1992), contend that it is improper for the Examiner to
pick the mica substrate with barium sulfate coating and exclude "the
environment in which it is employed and in which calcium carbonate is
essential to produce the result." (Id.) We do not find Appellants' argument
persuasive. We find In re Jones to be inapposite to the instant issue, i.e.,
whether it would have been obvious to substitute a barium sulfate-coated
mica substrate for the mica substrate in Schmidt in light ofNoguchi's
teaching of the equivalence of these substrates for coating and use in
cosmetic applications. In Jones, the issue was whether the potentially
infinite genus of structural compounds disclosed by a reference rendered the
claimed invention obvious where there was a disclosed basic structure in the
reference and specific examples. In re Jones, 958 F.2d at 349-50. The
Court said no because there was a decided lack of structural similarity
between the examples and the claimed invention. Id.
Moreover, we disagree with Appellants that "utility of the particular
materials of Noguchi," i.e., the final pigment filler of Noguchi, being
dependent on calcium carbonate (Appeal Br. 6) has any bearing on whether
one of ordinary skill in the art would have understood Noguchi to teach mica
and barium sulfate-coated mica are equivalently acceptable substrates for
pigment flake particles that will be subsequently coated and used in cosmetic
compositions. For the reasons discussed above with respect to claim 1,
Appellants do not persuade us that the Examiner erred in rejecting claim 21
for obviousness over Schmidt and Noguchi.
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Appellants have waived arguments directed to Kim or Schumacher.
Therefore, we also affirm the rejection of claim 5 under 35 U.S.C. § 103(a)
based on Schmidt, Noguchi, and Kim, and the rejection of claims 7 and 8
under 35 U.S.C. § 103(a) as unpatentable over Schmidt, Noguchi, and
Schumacher.
SUMMARY
We affirm the Examiner's rejection of claims 1--4, 10-13, 15-17, and
21under35 U.S.C. § 103(a) as unpatentable over Schmidt and Noguchi.
We affirm the Examiner's rejection claim 5 under 35 U.S.C. § 103(a)
as unpatentable over Schmidt, Noguchi, and Kim.
We affirm the Examiner's rejection of claims 7 and 8 under 35 U.S.C.
§ 103(a) as unpatentable over Schmidt, Noguchi, and Schumacher.
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. § 1.136(a).
AFFIRMED
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