Raimund Schmid et al.

Patent Trials and Appeals Board

Aug 9, 2019

13018577 - (D) (P.T.A.B. Aug. 9, 2019)

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.
13/018,577 02/01/2011 Raimund Schmid 018894-0824 8781
131076 7590 08/09/2019
BASF Corporation
100 Park Avenue
Florham Park, NJ 07932
EXAMINER
SULLIVAN, DANIELLE D
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
08/09/2019 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):
basf-ip@basf.com
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte RAIMUND SCHMID, CAROLYN LAVALLEE,
STEVEN A. JONES, and JAMES CARROLL
__________

Appeal 2018-004660
Application 13/018,577
Technology Center 1600
__________

Before JEFFREY N. FREDMAN, JOHN G. NEW, and JAMIE T. WISZ,
Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1,2 under 35 U.S.C. § 134 involving claims to a
pigment composition. The Examiner rejected the claims as obvious. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 Appellants identify the Real Party in Interest as BASF SE (App. Br. 4).
2 We have considered and herein refer to the Specification of Feb. 1, 2011
(“Spec.”); Non-Final Office Action of May 31, 2017 (“Non-Final Action”);
Appeal Brief of Oct. 5, 2017 (“App. Br.”); Examiner’s Answer of Feb. 6,
2018 (“Answer”); and Reply Brief of Mar. 30, 2018 (“Reply Br.”).
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Statement of the Case
Background
“Sparkling effects on an object can be defined as locations where
compared to the adjacent area in directed light a light of higher intensity is
observed. They are caused by light reflecting pigments” (Spec. 1:13–15).
“The light reflecting properties of pigments are depending on particle size,
particle shape and chemical composition” (Spec. 1:18–19). “Conventional
pearl pigments based on metal-coated or oxide coated, natural or synthetic
mica show when measured with the Byk-mac a high sparkling intensity at
the 15°-illumination angle” (Spec. 5:24–26).
The Specification teaches that “[i]t has now surprisingly been found
that blends of effect pigments and platelet-like perlite show an improved
sparkling behaviour, in particular an unexpected attractive higher sparkle
intensity at all angles” (Spec. 5:32–34).
The Claims
Claims 1, 4, 6–11, 16, 17, 19, and 20 are on appeal. Claim 1 is the
sole independent claim, is representative and reads as follows:
1. A pigment composition comprising:
a flake consisting of perlite; and
an effect pigment comprising one or more of:
a platelet shaped substrate coated with one or both of a
dielectric material and a metal layer, said platelet-
shaped substrate being selected from the group
consisting of: platelet-shaped substrates consisting
of natural mica, synthetic mica, or BiOCl; SiO2
flakes; Al2O3 flakes; Fe2O3 flakes; glass flakes;
metal flakes; and combinations thereof;
a metal effect pigment; and
a platelet shaped organic pigment selected from the group
consisting of platelet shaped quinacridones,
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phthalocyanine, fluororubine, dioxazines,
diketopyrrolopyrroles, and combinations thereof;
wherein: the pigment composition is a sparkling pigment
composition and the pigment composition has a higher
sparkle intensity at all angles when compared to the
sparkle intensity of the effect pigment alone.

The Rejection
The Examiner rejected claims 1, 4, 6–11, 16, 17, 19, and 20 under
35 U.S.C. § 103(a) as obvious over Bugnon3 and Palm4 (Non-Final Act. 3–
4).
The Examiner finds Bugnon teaches “pearlescent pigments
comprising platelet-shaped substrate selected from mica and perlite and
layered with metal oxides” that include TiO2/SiO2/TiO2 and
Fe2O3/SiO2/TiO2 (Non-Final Act. 3).
The Examiner acknowledges Bugnon “does not disclose an example
with a flake consisting of perlite with an effect pigment. Also, a floater
content of less than 10% by volume is also not specified” (Non-Final Act.
4). The Examiner finds Palm teaches “expanded perlite products having a
controlled particle size less than 50 microns” where the “perlite acts as a
functional filler to provide smooth paint coatings” (Non-Final Act. 4).
The Examiner finds it obvious to “add the flake perlite taught by Palm
et al. to obtain smoother paint coatings with a lower floater content” and “to
combine two compositions each of which is taught by the prior art to be
useful for the same purpose, in order to form a third composition to be used
for the very same purpose (Non-Final Act. 4).

3 Bugnon et al., WO 2009/135784 A1, published Nov. 12, 2009.
4 Palm et al., US 2003/0127022 A1, published July 10, 2003.
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The issue with respect to this rejection is: Does a preponderance of
the evidence of record support the Examiner’s conclusion that Bugnon and
Palm render claim 1 obvious?
Findings of Fact
1. Bugnon teaches “pearlescent pigments comprising a platelet-
shaped substrate, a metal oxide coating comprising a metal oxide layer
having a refractive index of greater than 1.8 and a protective layer” (Bugnon
1:4–6).
2. Bugnon teaches “a metal oxide having a refractive index of
smaller than 1.8 and a metal oxide having a refractive index of greater than
1.8 is preferred. Examples of such multilayer structures are TiO2/SiO2/TiO2
and Fe2O3/SiO2/TiO2” (Bugnon 4:15–17).
3. Bugnon teaches the “pearlescent pigments of the present
invention comprise a platelet-shaped substrate” and “[p]referred are platelet-
like particles on basis of a transparent substrate having a low index of
refraction, especially . . . perlite” (Spec. 6:10–11).
4. Bugnon teaches that several preferred substrates are in flake
form, including “SiO2 flakes, Al2O3 flakes, TiO2 flakes, and glass flakes”
(Bugnon 5:1–2).
5. Bugnon teaches “plateletlike organic pigments, such as
chinacridones, dioxazines, phthalocyanine, fluororubine, red perylenes, or
diketopyrrolopyrroles” (Bugnon 5:11–13).
6. Bugnon teaches “[i]n the pigmentation of binder systems, for
example for paints . . . the pigment is incorporated into the printing ink in
amounts of 0.1 to 50 % by weight” (Bugnon 15:12–14).
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7. Palm teaches “improved perlite products with controlled
particle size distribution” (Palm ¶ 14). Palm teaches the “expanded perlite
product has, for example, a floater content of less than 10 percent by
volume” (Palm ¶ 17).
8. Palm teaches the “improved perlite product with controlled
particle size distribution of the present invention can also be used as a
functional filler” (Palm ¶ 88).
9. Palm teaches, in Table II, a number of exemplary compositions
with floater volumes less than 2%, and every example has 8% or less floater
volume (see Palm ¶ 100, Table II).
10. Palm teaches “[e]xamples of such applications include use of
the improved expanded perlite product with controlled particle size
distribution as a flatting agent or as an aid to improve scrubbability in paints
and coatings” (Palm ¶ 89).
11. Palm teaches “the improved perlite product examples exceed
the flatting efficiency (in both oil-based paint and Latex paint) for
conventional diatomite products” (Palm ¶ 101).
12. Palm teaches “the improved perlite product with controlled
particle size distribution has superior top size control, offering the advantage
of comparatively smooth-surfaced paint and coating films” (Palm ¶ 101).
Principles of Law
The “combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417.
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Analysis
We adopt the Examiner’s findings of fact and conclusion of law (Non-
Final Act. 3–4, FF 1–12) and agree that the combination of Bugnon and
Palm renders the claims obvious. We address Appellants’ arguments below.
Appellants contend:
the cited references relied upon by the Office fail to teach such
a combination where the first material is only perlite, and where
the second material is an effect pigment. The Bugnon reference
describes materials that lack the perlite, and Palm is directed to
materials that flatten, not brighten (i.e. sparkle), the appearance
of the pigments. Appellant submits that, contrary to the
Office’s assertion, there is no reason to combine Bugnon and
Palm, and even if they were combined, they fail to provide the
person of ordinary skill in the art any expectation of success in
the increased sparkle as claimed.
(App. Br. 7).
The Examiner responds that “Bugnon teaches that perlite formulations
with effect pigments and is only silent to the perlite being in flake form.
Palm teaches that perlite flakes were known to be added to pigments to
improve sheen” (Ans. 3). The Examiner found the artisan would have had
reason to use “the flake perlite taught by Palm et al. to obtain smoother paint
coatings with a lower floater content” (Non-Final Act. 4).
We find the Examiner has the better position. As the Examiner
pointed out, Bugnon teaches the use of perlite as a substrate for pearlescent
pigments (FF 3) in paint (FF 6) and Bugnon also teaches substrates may be
in flake form (FF 4). Palm teaches expanded perlite with low floater content
(FF 7, 9) improve scrubbability (FF 10), flattening (FF 11), and resulted in a
smooth-surface (FF 12). Thus, the Examiner has provided a number of
reasons, aside for the substitution of one known form of perlite for a
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different form of perlite,5 for the combination. That is, as the Examiner
points out, the ordinary artisan would have had reason to use the expanded
perlite of Palm as the substrate in Bugnon because Palm’s expanded perlite
had lower floater content, improved scrubbability for paint, and improved
smooth surface for the paint with a reasonable expectation of success.
“Obviousness does not require absolute predictability of success . . . all that
is required is a reasonable expectation of success.” In re Kubin, 561 F.3d
1351, 1360 (Fed. Cir. 2009) (emphasis and citation omitted).
Appellants contend “it has been surprisingly discovered that when an
effect pigment and flakes of perlite are blended, an improved sparkling
behavior is observed, and in particular, an unexpectedly higher sparkle
intensity is observed at all angles” (App. Br. 7). Appellants contend that
“despite teaching the use of perlite in flatting compositions (i.e. Palm), when
combined with the effect pigment in the present application, the claimed
compositions have increased sparkle effects” (App. Br. 13).
We find this argument unpersuasive because Appellants provide no
comparison with the closest prior art, evidentiary Declaration, or other
evidence demonstrating an improved sparkle effect. “It is well settled that
unexpected results must be established by factual evidence. Mere argument
or conclusory statements . . . [do] not suffice.” In re Soni, 54 F.3d 746, 750
(Fed. Cir. 1995) (citation omitted).

5 Wrigley found a strong case of obviousness for a claim that “recites a
combination of elements that were all known in the prior art, and all that was
required to obtain that combination was to substitute one well-known . . .
agent for another.” Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683
F.3d 1356, 1364 (Fed. Cir. 2012).
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Indeed, while the Specification does state that there is “an unexpected
attractive higher sparkle intensity at all angles” (Spec. 5:33–34), all of the
examples are presumably prophetic because the Specification uses the
present tense of “are” or “is” (see Spec. 37:9 to 41:14). See Atlas Powder
Co. v. E.I. du Pont De Nemours & Co., 750 F.2d 1569, 1578 (Fed. Cir.
1984) (“[T]he examples were written in the present tense to conform with
the PTO requirements on prophetic examples.”)
Appellants provide no comparison to the closest prior art of Bugnon,
which teaches pearlescent compositions that may be placed on perlite (FF 1–
6). See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991)
(“[W]hen unexpected results are used as evidence of nonobviousness, the
results must be shown to be unexpected compared with the closest prior
art.”) (citation omitted).
Appellants contend “Bugnon teaches pearlescent pigments
corresponding to the effect pigment component of the present pigment
composition. However, there is no teaching or suggestion of the perlite
component as claimed” (App. Br. 8).
We find this argument unpersuasive because the Examiner’s rejection
relies upon a combination of Bugnon’s teaching of paints with pearlescent
pigments (FF 1, 6) that may be placed on substrates including perlite (FF 3)
with Palm’s teaching of expanded perlites useful in paint compositions (FF
7–12). Prior art “must be read, not in isolation, but for what it fairly teaches
in combination with the prior art as a whole.” In re Merck & Co., Inc., 800
F.2d 1091, 1097 (Fed. Cir. 1986). It is the combination of Bugnon and Palm
that renders the claims obvious, not Bugnon alone.
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Appellants contend “Bugnon is silent with regard to floater content,
and Appellants further point out that, in fact, there is no discussion of, nor
disclosure of, floater content in any regard with respect to Bugnon, and as
such, there is no reason provided by Bugnon to combine it with Palm to cure
any deficiency” (App. Br. 9). Appellants contend that:
However, interestingly, claim 16 of the present application
does refer to floater content . . . faced with an entire absence of
information regarding floater content in the primary reference,
any reason for the combination of Palm with it can only be the
product of impermissible hindsight reconstruction based upon
present claim 16.
(App. Br. 9).
We do not find this argument persuasive because the Examiner’s
reasoning “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.” In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Moreover, Appellants
argument substantially focuses on whether it would have been obvious to
modify Bugnon with Palm and limiting the analysis to Bugnon as “primary”.
However,
where a rejection is predicated on two references each
containing pertinent disclosure . . . we deem it to be of no
significance, but merely a matter of exposition, that the
rejection is stated to be on A in view of B instead of on B in
view of A, or to term one reference primary and the other
secondary.

In re Bush, 296 F.2d 491, 496 (CCPA 1961).
The issue is more properly framed as whether the ordinary artisan
would have had reason to combine the various teachings in Bugnon and
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Palm in order to obtain a pigment composition that renders claim 1 obvious.
Here, the Examiner identifies the components of the claimed formulation in
Bugnon and Palm and provides reasons to combine the references, in order
to form a composition used for the same purpose. In re Kerkhoven, 626 F.2d
846, 850 (CCPA 1980). Therefore, while we are fully aware that hindsight
bias may plague determinations of obviousness, Graham v. John Deere Co.,
383 U.S. 1, 36 (1966), we are also mindful that the Supreme Court has
clearly stated that the “combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” KSR, 550 U.S. at 416. We agree with the Examiner that the
combination of Bugnon and Palm would have predictably created a sparkly
pigment composition (see Ans. 4).
Appellants contend:
Palm is related to flatting compositions, NOT the increase in
sparkle as presently claimed. As such, the perlite in the present
claims is used for the exact opposite purpose as stated in Palm;
not the same reason as alleged by the Office. In other words,
although the Office asserts that Palm is used for the same
purpose, the purpose for the use of the perlite in Palm and the
use of perlite in the present application are diametrically
opposed uses and results.
(App. Br. 10). Appellants cite Palm’s teaching “to reduce the sheen” and
conclude that “Palm expressly states that the materials are used to reduce
sheen in a high gloss paint” (App. Br. 11). Appellants contend “Palm
teaches that the improved perlite gives a smoother coating but along with
this improvement also comes a flatting effect: a reduction in the reflective
properties of the paint” (App. Br. 11).
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We find this argument unpersuasive for several reasons. First, as the
Examiner notes “Bugnon already teaches the presence of perlite in the
pearlescent pigments” (Ans. 5), reasonably suggesting that the presence of
perlite does not impact the pearlescent effect. While we recognize that the
form of perlite in Bugnon differs from that in claim 1, Appellants provide no
evidence that these perlites differ in flatting effect.
Second, and of equal importance, the Examiner also finds that “Palm
teaches that perlite in flake forms improve the smoothness of the paints and
Palm does not teach that the flatting effect causes a reduction in sparkle
effect” (Ans. 5). The argument that flatting impacts sparkle is solely
attorney argument without any evidentiary foundation. See In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984) (Arguments and conclusions
unsupported by factual evidence carry no evidentiary weight.) “Attorney’s
argument in a brief cannot take the place of evidence.” In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974).
Indeed, the Specification itself discusses different properties that may
be imparted by pigments, teaching “pigments that, besides imparting colour
to an application medium, impart additional properties, for example angle
dependency of the colour (flop), lustre (not surface gloss) or texture” (Spec.
8:7–9). Thus, the Specification distinguishes texture, lustre, angle
dependency of color, and surface gloss from one another (see id.).
Lastly, even if there were evidence that Palm teaches some impact on
sparkle due to the use of the expanded perlite, which there is not, “a given
course of action often has simultaneous advantages and disadvantages, and
this does not necessarily obviate motivation to combine.” Medichem, S.A. v.
Rolabo S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). The Examiner has
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provided several reasons to combine Bugnon and Palm and therefore even if
there were some slight reduction in sparkle, there would still have been
reasons to combine the teachings of these two references as already
discussed.
Appellants contend “the Office is making the assertion that the sparkle
property of the present claims is inherent to the combination of Bugnon and
Palm, and the Office has failed to give credence to the surprising,
unexpected, and unpredictable (based on Bugnon and Palm) results” (App.
Br. 12).
We are not persuaded because, as noted above, Appellants have not
established any unexpected results. Moreover, Appellants have provided no
evidence that the pigment rendered obvious by Bugnon and Palm would
have lacked the “higher sparkle intensity” recited in claim 1. Inherency may
be relied upon in obviousness determinations. See In re Best, 562 F.2d
1252, 1255 (CCPA 1977) (internal citation and footnote omitted) (“Where,
as here, the claimed and prior art products are identical or substantially
identical. . . . the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product. . . . Whether the rejection is based on “inherency” under 35
U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly
or alternatively, the burden of proof is the same, and its fairness is evidenced
by the PTO’s inability to manufacture products or to obtain and compare
prior art products.”).
In the current case, the Examiner provides reasonable evidence
supporting a finding of inherency, because Bugnon teaches particles with the
pearlescent or sparkly effect (FF 1) that fall within the scope of claim 1 and
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would reasonably have been expected to have the same properties as those
claimed when combined with the expanded perlite substrate of Palm (FF 7).
As the Examiner notes the “fact that applicant has recognized another
advantage which would flow naturally from following the suggestion of the
prior art cannot be the basis for patentability when the differences would
otherwise be obvious” (Non-Final Act. 5). Therefore, the burden reasonably
shifts to Appellants to rebut the Examiner’s inherency position with
evidence that the combination of Bugnon and Palm would not necessarily
result in the higher sparkle intensity. Appellants have not provided any such
rebuttal evidence.
Conclusion of Law
A preponderance of the evidence of record supports the Examiner’s
conclusion that Bugnon and Palm render claim 1 obvious.
SUMMARY
In summary, we affirm the rejection of claim 1 under 35 U.S.C.
§ 103(a) as obvious over Bugnon and Palm. Claims 4, 6–11, 16, 17, 19, and
20 fall with claim 1.

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