SCHWEINFURTH, Ralf

Patent Trials and Appeals Board

Apr 1, 2020

12170095 - (D) (P.T.A.B. Apr. 1, 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.
12/170,095 07/09/2008 Ralf SCHWEINFURTH MERCK-2902-C01 1470
23599 7590 04/01/2020
MILLEN, WHITE, ZELANO & BRANIGAN, P.C.
2200 CLARENDON BLVD.
SUITE 1400
ARLINGTON, VA 22201
EXAMINER
LEFF, STEVEN N
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
04/01/2020 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):
docketing@mwzb.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RALF SCHWEINFURTH
____________

Appeal 2019-003975
Application 12/170,095
Technology Center 1700
____________

Before N. WHITNEY WILSON, MONTÉ T. SQUIRE, and
AVELYN M. ROSS, Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1

Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 2–6, 9, 10, 12, 13, and 15–18.3 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 In this Decision, we refer to the Specification filed July 9, 2008 (“Spec.”);
Final Office Action dated Apr. 24, 2018 (“Final Act.”); Appeal Brief filed
Nov. 26, 2018 (“Appeal Br.”); Examiner’s Answer dated Feb. 26, 2019
(“Ans.”); and Reply Brief filed Apr. 26, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies Merck Patent GmbH as the real
party in interest. Appeal Br. 1.
3 Claims 1, 7, 8, and 14 are canceled (Claims Listing filed Jan. 3, 2018) and
claim 11 is withdrawn (Final Act. 2).
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CLAIMED SUBJECT MATTER
The invention relates to the use of multilayered pigments based on
platelet-shaped substrates for coloring food and pharmaceutical products.
Spec. 1; Abstract.
Claim 12, the sole independent claim, illustrates the claimed subject
matter on appeal and is reproduced below from the Claims Appendix to the
Appeal Brief:
12. A food product, comprising a colorant which is at least
one multilayered pigment based on a transparent or
semi-transparent platelet-shaped substrate, in combination with
a dye that is a natural or nature-identical dye that is at least
one of E101, E104, E110, E124, E131, E132, E140, E141,
E151, E153, or E160a, or a mixture thereof and a food product,
wherein the transparent or semi-transparent
platelet-shaped substrate is a mica, talc, kaolin, aluminum,
Al2O3, Fe2O3, TiO2, glass or SiO2 platelet, and
wherein the multilayered pigment based on multicoated
platelet-shaped substrates comprises at least one layer sequence
(A) (B), where
(A) is a 10-500nm high-refractive-index coating consisting of
titanium dioxide and/or iron oxide, and
(B) is a 10-500nm colorless coating having a refractive index of
n < 1.8, and has one of the following layer structure:
substrate + TiO2 + SiO2 + TiO2
substrate + TiO2 + SiO2 + Fe2O3
substrate + TiO2 + SiO2 + Fe3O4
substrate + TiO2 + Al2O3 + TiO2
substrate + TiO2 + Al2O3 + Fe2O3
substrate + TiO2 + Al2O3 + Fe2O3
substrate + Fe2O3 + SiO2 + TiO2
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substrate + Fe3O4 + SiO2 + TiO2
substrate + Fe2O3 + Al2O3 + TiO2
substrate + Fe3O4 + Al2O3 + TiO2 and wherein
(1) the product is a food having a product matrix
containing 0.0025 - 10% multilayer pigment in the product
matrix, or
(2) the product is a surface colored food containing
0.1 - 30% multilayer pigment in a coating, or
(3) the product is a pulverulent material containing
0.05 - 50% multilayer pigment, and wherein the product is a
cake decoration, chewing gum, fondant, marzipan, cocoa,
chocolate, ice cream, cereal, nonpareils, jelly, candy, liquorice,
icing, candyfloss, fat, cream, blancmange, flan glaze, cold fruit
soup, milk, quark, yogurt, cheese, cheese rind, sausage casing,
fruit gum or sugar-coated almonds.
Appeal Br. 10–11 (key disputed claim language italicized and bolded).
REFERENCES
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Name Reference Date
Bauer4 WO 93/08237 A1 Apr. 29, 1993
Schweinfurth WO 00/03609 A1 Jan. 27, 2000
Pfaff5 EP 1045014 A2 Apr. 3, 2000

4 The Examiner refers and cites to Bauer et al., US 6,630,018 B2, issued
Oct. 7, 2003, as the U.S. equivalent of the Bauer reference. Ans. 3.
5 The Examiner refers and cites to Pfaff et al., US 6,517,628 B1, issued
Feb. 11, 2003, as the U.S. equivalent of the Pfaff reference. Ans. 3.
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REJECTION
On appeal, the Examiner maintains the following rejection:
claims 2–6, 9, 10, 12, 13, and 15–18 under 35 U.S.C. § 103(a) as being
unpatentable over Pfaff in view of Schweinfurth and Bauer. Ans. 3.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we affirm the Examiner’s
rejection based largely on the fact-finding and reasoning set forth in the
Answer and Final Office Action. We add the following primarily for
emphasis.
Claims 2–6, 9, 10, 12, 13, and 15–17
In response to the Examiner’s rejection, Appellant presents argument
for the patentability of claim 12 but does not present separate argument for
the patentability of dependent claims 2–6, 9, 10, 13, and 15–17. Appeal
Br. 2–7. Therefore, we select claim 12 as representative and claims 2–6, 9,
10, 13, and 15–17 stand or fall with claim 12. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner determines that the combination of Pfaff, Schweinfurth,
and Bauer suggests a food product satisfying the limitations of claim 12 and
concludes the combination would have rendered the claim obvious.
Ans. 3–8. On the record before us, we determine a preponderance of the
evidence and sound technical reasoning support the Examiner’s findings
regarding the teachings of the cited art and conclusion that the combination
of Pfaff, Schweinfurth, and Bauer would have rendered the food product of
claim 12 obvious. Pfaff, Abstract, 1:4–9, 2:13–21, 2:31–34, 3:5–13, 3:25–
29, 3:35–38, 3:52–4:39, 8:60, 10:1–4 (claim 17); Schweinfurth Abstract, 1,
4–5; Bauer, Abstract, 5:5–13, 6:17–20, 7:24–25.
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Appellant argues the Examiner’s rejection of claim 12 should be
reversed because Pfaff does not suggest that the food product is: (1) “a food
having a product matrix containing 0.0025 - 10% multilayer pigment in the
product matrix,” or (2) “a surface colored food containing 0.1 - 30%
multilayer pigment in a coating,” or (3) “a pulverulent material containing
0.05 - 50% multilayer pigment,” as recited in the claim. Appeal Br. 3–4. In
particular, Appellant contends
[t]he broad amounts of pigment disclosed in Pfaff further
do not suggest the determined working ranges of
components as recited in the claims. Pfaff does not teach .
. . the “same” concentration, but merely broad overlapping
ranges, which in no way suggest the various selections of
the present claims.
Id. at 6.
We do not find Appellant’s argument persuasive of reversible error in
the Examiner’s rejection based on the fact-finding and reasoning provided
by the Examiner at pages 3–15 of the Answer, which is supported by a
preponderance of the evidence. In particular, as the Examiner finds
(Ans. 3), Pfaff teaches a food product comprising a colorant which is a
multilayered pigment mixture. Pfaff 1:1–5, 2:8–19, 2:21–22, 2:30–34, 3:53,
4:38. As the Examiner further finds (Ans. 5, 9–10), Pfaff teaches that the
pigment mixture system is included in the food product as a mass coloring or
as a coating at a concentration of from about 0.1–70% by weight, which
overlaps the claimed range of 0.0025–10% multilayer pigment for coloring a
food having a product matrix (mass coloring), and encompasses the claimed
range of 0.1–30% multilayer pigment in a coating for a surface coated food
(coating). Pfaff 3:50–57, 4:22–23, 4:26–29, 4:36–39.
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It is well-settled that where claimed ranges “overlap or lie inside
ranges disclosed by the prior art,” a prima facie case of obviousness exists.
In re Wertheim, 541 F.2d 257, 267 (CCPA 1976). Indeed, where, “the
claimed ranges are completely encompassed by the prior art, the conclusion
is even more compelling than in cases of mere overlap.” In re Peterson, 315
F.3d 1325, 1330 (Fed. Cir. 2003).
Appellant further argues Pfaff does not teach or suggest a colorant or
pigment “in combination with a dye that is a natural or nature-identical dye,”
as recited in the claim. Appeal Br. 4; Reply Br. 1–2. In particular,
Appellant contends that “the dyes in the present claims are not equivalent to
Pfaff’s component B” and “Pfaff et al. does not teach any concentrations
with regard to the combination of multilayer pigments and soluble dyes
selected from natural or nature-identical dyes.” Appeal Br. 4. Appellant
also contends one of ordinary skill would not have been directed to make
each of the selections necessary to arrive at the claimed invention and would
have had “no reasonable expectation of success in the coloration of the
specific food products of claim 12.” Id. at 5.
Appellant’s arguments are not persuasive of reversible error.
Contrary to what Appellant argues, a preponderance of the evidence
supports the Examiner’s finding (Ans. 4–5, 9–13) that Pfaff suggests a
colorant comprising a multilayer pigment “in combination with a dye that is
a natural or nature-identical dye,” as recited in the claim. As the Examiner
finds (Ans. 4–5), Pfaff teaches that the multilayer pigments can be mixed
with other pigments or dyes in any proportion and “especially organic and
inorganic color pigments and dyes . . . of natural or synthetic origin.” Pfaff
4:18–20, 4:23–24. As the Examiner further finds (Ans. 5, 12), Schweinfurth
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teaches the use of “natural or nature-identical colorants” in iron oxide
pigment mixtures, including mixtures containing natural or natural-identical
dyes, such as E101, E104, E110, E132, E140, E141, and E151, and that such
use was known in the art. Schweinfurth 4.
The Examiner also provides a reasonable basis, which is supported by
a preponderance of the evidence in the record, to evince why one of ordinary
skill would have combined the teachings of Pfaff and Schweinfurth to arrive
at the specific dyes recited in the claim. Ans. 5 (explaining that one of
ordinary skill would have been motivated to use one of the specific natural
or natural-identical dyes taught by Schweinfurth in Pfaff’s multilayer
pigment mixture to enhance food products as a mass coloring or as a coating
and such use was known in the art); Pfaff 4:38–39; Schweinfurth 4. See also
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007) (“The combination
of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results.”).
Appellant fails to direct us to persuasive evidence or provide an
adequate explanation to establish why the Examiner’s articulated reasoning
lacks a rational underpinning or is otherwise based on some other reversible
error.
Appellant’s contentions that the “the dyes in the present claims are not
equivalent to Pfaff’s component B” and “Pfaff et al. does not teach any
concentrations with regard to the combination of multilayer pigments and
soluble dyes selected from natural or nature-identical dyes” (Appeal Br. 4)
are not persuasive because they are conclusory and unsupported by
persuasive evidence in the record. In re De Blauwe, 736 F.2d 699, 705 (Fed.
Cir. 1984); see also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997)
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(explaining that mere lawyer’s arguments or conclusory statements, which
are unsupported by concrete factual evidence, are entitled to little probative
value).
Appellant’s contentions in this regard are also not well-taken because
they do not meaningfully address the Examiner’s rejection, which, for the
limitation in question, is based on the combined teachings of Pfaff and
Schweinfurth and what the combined teachings of these references would
have suggested to one of ordinary skill in the art, and not only on what Pfaff
expressly discloses. One cannot show non-obviousness by attacking
references individually where the rejection is based on a combination of
references. See In re Keller, 642 F.2d 413,425 (CCPA1981).
Appellant also argues one of ordinary skill in the art would not have
combined Pfaff with either Schweinfurth or Bauer to arrive at the claimed
invention. Appeal Br. 5–6. In particular, Appellant contends one of
ordinary skill would not have combined Pfaff with Schweinfurth because the
pigments Schweinfurth discloses differ considerably from the pigments
disclosed in Pfaff, and Schweinfurth does not teach any pigments which
contain the layer sequence as recited in the claims. Id. at 5 (arguing “[n]o
layer is taught or suggested that corresponds to a layer (B)” and “nowhere
does said reference teach low-refractive metal oxide layers”). Appellant
further contends the combination of Pfaff with Bauer is deficient because
Bauer does not teach thicknesses of pigments such as those of Pfaff in food
coloration applications. Id. at 6.
Appellant’s contentions in this regard (Appeal Br. 5–6) are misplaced
and not persuasive of reversible error in the Examiner’s rejection because
they too are premised on what Appellant contends each reference teaches
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individually, and not the combined teachings of the cited references as a
whole and what the combined teachings would have suggested to one of
ordinary skill in the art. Keller, 642 F.2d at 425.
Contrary to what Appellant’s contentions seem to imply, the
Examiner does not rely on Schweinfurth for teaching the pigment mixture’s
layer sequence or the presence of a low refractive index metal oxide layer.
Rather, as the Examiner finds and explains (Ans. 3–4, 9, 11–12), Pfaff is
relied upon for teaching those elements of the claim. See Pfaff 2:8–19,
2:33–34, 8:60.
Appellant’s contention that Bauer does not teach thicknesses of
pigments such as those of Pfaff in food coloration applications (Appeal
Br. 6) is not persuasive because it is conclusory and, without more, does not
show reversible error in the Examiner’s findings and obviousness analysis.
De Blauwe, 736 F.2d at 705; see also In re Lovin, 652 F.3d 1349, 1356–57
(Fed. Cir. 2011) (holding that a “naked assertion” that the prior art fails to
teach a claim limitation is not an argument in support of separate
patentability).
Moreover, based on the Examiner’s fact-finding and reasoning
provided at pages 6–7 of the Answer, we determine that the Examiner does
provide articulated reasoning with a rational underpinning explaining why
one of ordinary skill in the art would have combined the teachings of
modified-Pfaff and Bauer in the manner claimed. Pfaff 3:25–29; 4:35–38;
Bauer, 6:17–20; 7:4–25. See also KSR, 550 U.S. at 420 (explaining that any
need or problem known in the art can provide a reason for combining the
elements in the manner claimed).
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Appellant’s disagreement as to the Examiner’s factual findings and
reasoning for combining the references, without more, is insufficient to
establish reversible error. Cf. SmithKline Beecham Corp. v. Apotex Corp.,
439 F.3d 1312, 1320 (Fed. Cir. 2006) (“[M]ere statements of disagreement .
. . as to the existence of factual disputes do not amount to a developed
argument.”).
Lastly, Appellant argues the Examiner’s rejection should be reversed
because the claimed invention produces unexpected results. Appeal Br. 6–7.
Relying on the Schweinfurth Declaration,6 Appellant contends the claimed
invention
shows the unexpected advantage achievable for the
combination of nacreous pigments and natural dyes, in a
variety of combinations, to produce a variety of products.
Specifically, it is shown that the well-known problem of
agglomeration of pigments having a platelet shaped
substrate is substantially improved, and improved colors
and color distribution are produced, where natural dyes are
combined with such pigments.
Id. at 6–7.
This argument is not persuasive. In attempting to overcome a prima
facie case of obviousness by showing unexpected results, the burden rests
with Appellant to establish (1) that the alleged unexpected results presented
as associated with the claimed invention are, in fact, unexpected, (2) that the
comparisons are to the disclosure of the closest prior art, and (3) that the

6 The “Schweinfurth Declaration” refers the Declaration of Ralph
Schweinfurth under 37 C.F.R. § 1.132 dated Nov. 2, 2012 provided in the
record.
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supplied evidentiary showing is commensurate in scope with the claimed
subject matter. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
Based on the fact-finding and reasoning provided by the Examiner at
pages 13–15 of the Answer, we concur with the Examiner that Appellant has
failed to satisfy the requisite burden.
Appellant has failed to establish that the relied upon results are, in
fact, unexpected. Appellant does not direct us to persuasive evidence or
explain adequately why the alleged improvement in the problem of
agglomeration of pigments and the improved colors and color distribution
Appellant contends are shown in the Schweinfurth Declaration are
considered unexpected results, as opposed to a results that would have been
reasonably expected by one of ordinary skill. Klosak, 455 F.2d at 1080
(“[T]he burden of showing unexpected results rests on [the party] who
asserts them.”). For example, with respect to the alleged improvement in the
agglomeration of pigments, as the Examiner explains (Ans. 14), because
certain of the examples tested by Appellant include a fat glaze component
that is melted, it would have not been unexpected to one of ordinary skill in
the art that the number of agglomerates would be reduced given that the
components were heated to a temperature of 65°C prior to mixing.
Moreover, based on Pfaff’s disclosure regarding multilayer pigments
being mixed with other pigments or dyes in any proportion particularly for
luster effects and/or color effects, and that the pigment mixture can be used
“to enhance food products, e.g., as a mass coloring or a coating” (Pfaff
4:23–24, 4:26–31, 4:36–38), we are not persuaded it would have been
unexpected to one of ordinary skill in the art that the claimed multilayer
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pigment and dye colorant composition would have exhibited improved
colors and color distribution relative to other compositions.
Appellant also has not provided evidence sufficient to show that there
is actually difference between the color/color distribution properties of the
claimed food product and those of the closest prior art (Pfaff) or that the
alleged showing of unexpected results is commensurate in scope with the
claims. The examples provided in the Schweinfurth Declaration
(Schweinfurth Decl. 1–17) are neither representative of the teachings of the
closest prior art nor commensurate with the scope of the claims. See In re
Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (“Evidence of secondary
considerations must be reasonably commensurate with the scope of the
claims.”). Appellant does not specify or discuss how any of the
formulations tested and provided in the Schweinfurth Declaration compare
to the prior art formulations taught or suggested by Pfaff or adequately
explain why the formulations of the examples tested are representative of the
overall scope of the claims.
Although Appellant contends the claimed invention “shows the
unexpected advantage achievable for the combination of nacreous pigments
and natural dyes” (Appeal Br. 6) and “one of ordinary skill in the art would
not have expected this improvement” (id. at 7), Appellant does not provide
an adequate explanation or direct us to reliable data or experimental results
sufficient to support those contentions. De Blauwe, 736 F.2d at 705 (“It is
well settled that unexpected results must be established by factual evidence.
Mere argument or conclusory statements in the specification does not
suffice.”).
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Appellant’s contentions at page 3 of the Reply brief regarding the
claimed product providing various advantages and exhibiting a broad range
of properties, without more, are not persuasive because the fact that
Appellant may have recognized other alleged improvements or advantages
“which would flow naturally from following the suggestion of the prior art
cannot be the basis for patentability when the difference would otherwise
[have been] obvious.” Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985).
We, therefore sustain the Examiner’s rejection of claims 2–6, 9, 10,
12, 13, and 15–17.
Claim 18
Claim 18 depends from claim 12 and further recites “which food
product is a surface-coated food.” Appeal Br. 11 (Claims Appendix).
The Examiner determines that the combination of Pfaff, Schweinfurth,
and Bauer suggests a food product satisfying the limitations of claim 18 and
concludes the combination would have rendered the claim obvious
(Ans. 3–9), which we find is supported by preponderance of the evidence in
the record. Pfaff, Abstract, 1:4–9, 2:13–21, 2:31–34, 3:5–13, 3:25–29,
3:35–38, 3:52–4:39, 8:60, 10:1–4; Schweinfurth Abstract, 1, 4–5; Bauer,
Abstract, 5:5–13, 6:17–20, 7:24–25.
In response to the Examiner’s rejection of claim 18, Appellant asserts
that “Pfaff in no way teaches surface coating of foods” and that “surface
coating of foods . . . is a complicated and difficult proposition with no
reasonable expectation of success due to the exacting conditions needed for
acceptable, during, consumable coating.” Appeal Br. 8.
We do not find Appellant’s assertions persuasive of reversible error in
the Examiner’s rejection of claim 18 because they are conclusory and,
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without more, insufficient to establish reversible error in the Examiner’s
findings and determination of obviousness. De Blauwe, 736 F.2d at 705; In
re Lovin, 652 F.3d at 1356–57.
We, therefore, sustain the Examiner’s rejection of claim 18.
Accordingly, we affirm the Examiner’s rejection of claims 2–6, 9, 10,
12, 13, and 15–18 under 35 U.S.C. § 103(a) as obvious over of the
combination of Pfaff, Schweinfurth, and Bauer.
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
2–6, 9, 10,
12, 13,
15–18
103(a) Pfaff, Schweinfurth,
Bauer
2–6, 9, 10,
12, 13,
15–18

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)(iv).
AFFIRMED