Kronos International, Inc.

Patent Trials and Appeals Board

Feb 3, 2020

14563595 - (D) (P.T.A.B. Feb. 3, 2020)

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.
14/563,595 12/08/2014 Frank Mersch 0550221.00061 6961
20873 7590 02/03/2020
Locke Lord LLP
Attn: IP Docketing
P.O. BOX 55874
Boston, MA 02205
EXAMINER
PARVINI, PEGAH
ART UNIT PAPER NUMBER
1731
NOTIFICATION DATE DELIVERY MODE
02/03/2020 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):
patent@lockelord.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK MERSCH and UWE WILKENHOENER
Appeal 2018-009000
Application 14/563,595
Technology Center 1700
BEFORE CATHERINE Q. TIMM, JAMES C. HOUSEL, and
JEFFREY R. SNAY, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–11 under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement. We have
jurisdiction under 35 U.S.C. § 6(b).

1 An oral hearing in this appeal was conducted on January 27, 2020. A copy
of the transcript from this hearing will be made of record in due course.
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Kronos
International, Inc. Appeal Brief (“Appeal Br.”) filed April 16, 2018, p. 1.
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Application 14/563,595

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We REVERSE.3
CLAIMED SUBJECT MATTER
The claims are directed to a composite pigment containing calcium
phosphate. Spec. ¶ 2.
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the claimed subject matter:
1. A composite pigment containing calcium phosphate, comprising:
titanium dioxide pigment particles having an average
primary particle size from about 200 nm to about 400 nm;
precipitated, particulate crystalline calcium phosphate in
quantities of at least about 10% by weight, referred to the
composite pigment; and
wherein the precipitated calcium phosphate has a particle
size of at least about 0.2 μm.
REFERENCES
Appellant’s arguments rely on the following prior art:
Name Reference Date
Gerhard Auer et al., Pigments, Inorganic, 2. White Pigments, in
ULLMANN’S ENCYCLOPEDIA OF INDUSTRIAL CHEMISTRY P, 1–41 (2011).
(“Auer”)
S. Wiechers et al., Titanium Dioxide Particle Size vs. Sun Protection
Performance, in 5 COSMETICS & TOILETRIES 128, 332–339 (May 2013).
(“Wiechers”)

3 Our Decision additionally refers to the Specification (“Spec.”) filed Dec. 8,
2014, the Examiner’s Answer (“Ans.”) dated July 27, 2018, and the Reply
Brief (“Reply Br.”) filed Sept. 21, 2018.

Appeal 2018-009000
Application 14/563,595

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OPINION
The sole issue before us in this appeal is whether there is adequate
written description support in the original disclosure, including the
Specification and drawings, that reasonably conveys that Appellant was in
possession of a composite pigment containing titanium dioxide pigment
particles of average primary particle size from about 200 nm to about 400
nm. During prosecution before the Examiner, Appellant introduced the term
“primary” into claim 1 in order to distinguish over the prior art. Appeal Br.
4–5. In particular, Appellant wished to distinguish between the recited
titanium dioxide pigment from photocatalytic titanium dioxide by reciting
the size of the primary pigment particles. Id. at 5. The Examiner rejected
claim 1 and its dependent claims on the basis that Appellant’s original
disclosure fails to provide support for the average titanium dioxide particle
size referring to “primary” particles.
After review of the Examiner’s and Appellant’s opposing positions
and the appeal record before us, we determine that Appellant’s arguments
are sufficient to identify reversible error in the Examiner’s written
description rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Accordingly, we reverse the stated rejection for substantially the reasons set
forth in the Appeal and Reply Briefs.
There is no dispute that the Specification fails to provide literal
written descriptive support for the term “primary” in the recitation, “titanium
dioxide pigment particles having an average primary particle size from
about 200 nm to about 400 nm” in claim 1. Compare Appeal Br. 3, with
Ans. 3. However, Appellant argues that one of ordinary skill in the art would
understand that the expressly recited particle size range for the titanium
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dioxide pigment particles refers to the primary particle size rather than
agglomerate particle size. Appeal Br. 3. In particular, Appellant contends
that Figures 1 and 2 depict both primary particles as well as agglomerates
along with a scale such that the ordinary artisan would be able to determine
that the primary particles fall within the size range recited in claim 1. Id. at
3–4.
Appellant asserts that the drawings provide scanning electron
microscope images that have a scale permitting primary particles, whether
alone or part of an agglomerate, to be measured. Appeal Br. 5. Appellant
asserts that the Declaration under 37 C.F.R. § 1.132 of Frank Mersch
(“Declaration” or “Decl.”) filed April 12, 2017, explains how one skilled in
the art would have been able to use known mathematical equations and the
visible crystal lengths in these drawings to determine the average size of the
primary particles. Id. Further, Appellant urges that doing so establishes that
the primary particles have sizes within the recited 200–400 nm range,
whereas the agglomerates are all larger than 400 nm. Id. Appellant contends,
therefore, that the drawings clearly convey to one of ordinary skill in the art
that the recited average particle size range is directed to primary particles.
Id.
Moreover, Appellant contends that the prior art informs those skilled
in the art that the relevant pigment particle size range would be describing
primary pigment particles. Appeal Br. 4. Appellant first directs attention to
Wiechers as disclosing a similar determination of the average primary
particle size of titanium dioxide pigment by statistically analyzing the
primary particles visible in transmission electron microscopy images. Id. at
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6. Appellant also asserts that Auer teaches that other techniques are used to
measure the overall size of agglomerates, rather than primary particles. Id.
Appellant further directs attention to the Specification which teaches
that the composite particles preferably contain the pigment in ideally
dispersed form, which a skilled artisan would understand to mean in a form
without agglomerates of the pigment particles. Appeal Br. 6, citing Spec.
¶ 29. Appellant urges that this teaching indicates that the recited particle size
range necessarily refers to primary particles and not to agglomerates. Id.
Additionally, Appellant argues that under Mie’s theory, a pigment has
an ideal primary particle size that is one-half the wavelength of visible light,
which corresponds to a primary particle size range of about 200–400 nm.
Appeal Br. 7, citing Decl. ¶ 7, Wiechers 332. Appellant states Wiechers
experimentally demonstrated this theory, that visible light scattering became
stronger as primary particle size increased to within this ideal range, and that
titanium dioxide agglomerates formed from primary particles smaller than
this ideal range do not have a significant impact on visible light scatter. Id. at
8, citing Wiechers 338. Appellant thus contends that the skilled artisan
would necessarily understand the underlying theory that a pigment’s ability
to reflect visible light is based on the size of the primary pigment particles,
rather than the presence or size of any agglomerates. Id.
Still further, Appellant contends that Auer supports the reference to
the size of the pigment particles as primary particles. Appeal Br. 9.
Appellant asserts that although Auer simply refers to the particle size of the
titanium dioxide pigment particles, it is clear that Auer is referring to
primary pigment particles. Id., citing Auer §§ 2.3.1, 2.5, 2.8, 2.9, and 3.2.1.
Moreover, Appellant asserts that Nonami (US 2004/0171505 A1, published
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Sept. 2, 2004), cited during prosecution before the Examiner, also refers to
the size of primary particles simply as “particle size,” but distinguishes
agglomerates by referring to these particles as microparticles or secondary
particles. Id., citing Nonami ¶¶ 68, 76, 89, 109. Appellant similarly asserts
that Sanbayashi (US 2002/0160910 A1, published Oct. 31, 2002) also refers
to primary particles when discussing the “average particle size.” Id. at 9–10,
citing Sanbayashi ¶¶ 3, 48.
Finally, Appellant urges that the Examiner acknowledges that there is
no evidence of record that suggests that a skilled artisan would use “particle
size” of titanium dioxide pigment to refer to anything other than primary
particle size. Appeal Br. 10. Therefore, Appellant argues that those skilled in
the art would only understand the original disclosure in this case to be
referring to the primary particle size when disclosing the average particle
size of the titanium dioxide pigment particles. Id.
Appellant’s arguments are persuasive. We begin by noting that the
Examiner fails to address or otherwise respond to Appellant’s evidence
including Auer, Nonami, and Sanbayashi. As Appellant argues, this
evidence supports Appellant’s position that those skilled in the art would
only understand the original disclosure in this case to be referring to the
primary particle size when disclosing the average particle size of the
titanium dioxide pigment particles. The Examiner also fails to address
Appellant’s assertion that Specification paragraph 29 further supports that
the titanium dioxide pigment particles of claim 1 are primary particles.
Indeed, not only does the Specification teach in a preferred
embodiment that the pigment, i.e., the titanium dioxide pigment particles,
are in “ideally dispersed form,” this dispersed form is contrasted with a
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“flocculated” or agglomerated form. Spec. ¶ 29. The Specification also
teaches that the calcium phosphate particles, which can be both primary
particles and particle agglomerates, are larger than the titanium dioxide
pigment particles. Id. ¶ 24.
The Examiner raises a concern that it is not possible to clearly identify
single primary particles of titanium dioxide in Appellant’s drawings as these
drawings are two-dimensional, and many of the particles therein have sizes
less than 200 nm. Ans. 4. The Examiner submits that the only way to
identify the size of the particles in the drawings is through the scale because
no mathematical equation was disclosed. Ans. 5. However, the Examiner
fails to explain in any detail or otherwise support why it is not possible to
identify single primary particles or determine the size of these particles. We
note that Figures 1 and 2 are SEM images that are two-dimensional images
of three-dimensional space. As Appellant explains, the single primary
particles would have the shape as shown in Annex II. See Decl. Annex II.
One skilled in the art would readily recognize that only some of the single
primary particles in Figures 1 and 2 would be visible in profile, while others
would be at various oblique angles to this profile. Those single particles
visible in profile in both Figures 1 and 2 appear to have lengths that fall
within the range recited in claim 1.
With regard to Appellant’s assertion that Mie’s theory supports
Appellant’ position, the Examiner submits that this theory does not mean
that pigment particles with a primary particle size of larger or smaller size do
not exist. Ans. 5–6. However, claim 1 recites that the titanium dioxide
pigment particles have “an average primary particle size from about 200 nm
to about 400 nm.” Claim 1 (emphasis added). As such, the presence of
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primary pigment particles above or below this range is not excluded as this
range is recited as the average primary particle size.
In rejecting a claim under 35 U.S.C. § 112(a) for lack of adequate
descriptive support, it is incumbent upon the Examiner to establish that the
originally-filed disclosure would not have reasonably conveyed to one
having ordinary skill in the art that Appellant had possession of the now
claimed subject matter. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010) (en banc). Adequate description under 35
U.S.C. § 112(a) does not require literal support for the claimed invention.
Purdue Pharma L.P. v. Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000)
(“In order to satisfy the written description requirement, the disclosure as
originally filed does not have to provide in haec verba support for the
claimed subject matter at issue.”); In re Herschler, 591 F.2d 693, 701
(CCPA 1979); In re Edwards, 568 F.2d 1349, 1351–52 (CCPA 1978); In re
Wertheim, 541 F.2d 257, 262 (CCPA 1976). Rather, it is sufficient if the
originally-filed disclosure would have conveyed to one having ordinary skill
in the art that Appellant had possession of the concept of what is claimed. In
re Anderson, 471 F.2d 1237, 1242 (CCPA 1973).
Here, Appellant has presented extensive evidence that one of ordinary
skill in the art would have understood that the recited titanium dioxide
pigment particles are primary particles having the recited size range, and the
Examiner has failed to address much of this evidence. We are, therefore,
persuaded that a preponderance of the evidence supports Appellant’s view
that those skilled in the art would have readily understood that the recited
particle size range necessarily refers to primary particles and not to
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agglomerates. Accordingly, we do not sustain the Examiner’s written
description rejection of claims 1–11.4
CONCLUSION
Upon consideration of the record, and for the reasons given above and
in the Appeal and Reply Briefs, the decision of the Examiner rejecting
claims 1–11 under 35 U.S.C. § 112(a) as failing to comply with the written
description requirement is reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. §
Basis Affirmed Reversed
1–11 112(a) Written Description 1–11

REVERSED

4 Although we determine there is support under 35 U.S.C. § 112(a) for
“primary,” because the term is not used in the Specification, there is a basis
for objecting to the Specification to compel Appellant to amend the
Specification to provide proper antecedent basis for the added claim term.
See MPEP § 608.01(o) (providing the reasons for so objecting to the
specification and reproducing the form paragraph for such an objection). The
Examiner and Appellant should consider resolving the issue of lack of
antecedent basis on return of the case to the jurisdiction of the Examiner.