Bornemann, Christian et al.

Patent Trials and Appeals Board

Dec 31, 2020

2019003441 (P.T.A.B. Dec. 31, 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.
12/673,205 12/21/2010 Christian Bornemann BCM0081
(PAT0001414US01)
6611
48394 7590 12/31/2020
SERVILLA WHITNEY LLC
33 WOOD AVE SOUTH
SUITE 830
ISELIN, NJ 08830
EXAMINER
BALDORI, JOSEPH B
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
12/31/2020 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):
docket@dsiplaw.com
hservilla@dsiplaw.com
lmurphy@dsiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTIAN BORNEMANN,
HEINER CLOPPENBURG, CARLOS VIGNOLO,
JURGEN LOHMANN, and STUART KENDALL SCOTT

Appeal 2019-003441
Application 12/673,205
Technology Center 3700
Before JAMES A. WORTH, ERIC C. JESCHKE, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL

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STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–9, 11, and 12. See Final Act. 1; Adv.
Act. 2 (cancelling claims 10 and 13). We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
The claims are directed to a process for formulating a color match of a
target shade. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A process for formulating a color match of pigmented
shades to a target shade, comprising:
i) using calibration scales to compile an effect matrix for
each of the ingredients included in a coloring system, the effect
matrix being determined by varying amounts of one or more
pigments for a specified formula around a setpoint concentration
and an associated coloristic effect being calculated in a reflection
space or in CIELab space angle-dependently using optical
materials parameters, the coloring system being a composition of
at least two different pigments and/or binders, the calibration
scales being compiled using information related to variations
between raw material batches of the ingredients used in the
coloring system, wherein information content of the effect matrix

1 In this Decision, we refer to (1) the Examiner’s Final Office Action dated
June 6, 2018 (“Final Act.”), Advisory Action dated September 24, 2018
(“Adv. Act.”), and Answer dated January 31, 2019 (“Ans.”), and (2)
Appellant’s Appeal Brief dated November 19, 2018 (“Appeal Br.”) and
Reply Brief dated March 29, 2019 (“Reply Br.”).
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as BASF Coatings
GmbH, the assignee. Appeal Br. 3.
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is utilized for tinting a reference formula toward a target point
deviating from a reference point in the reference formula,
ii) determining the optical materials parameters of the
target shade,
iii) selecting a starting formula,
iv) determining the color difference between the starting
formula and the target shade,
v) calculating a first matched color formula while taking
account of the effect matrices,
vi) using the first matched color formula to produce a
coloring system matched to a target shade, and
vii) repeating steps iv) v) and vi) until a target color
difference is reached,
so as to continually update the effect matrices with shade-
relevant information during ongoing production of the coloring
system, the shade-relevant information comprising the entirety
of the dependences of shade changes in the form of differentials
of the effect matrix expressed by dL*/dci, da*/dci and db*/dci for
achromatic shades and dL*/dci, dC*/dci and dH*/dci for
chromatic shades.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Kettler US 5,929,998 July 27, 1999
Graf US 6,870,614 B2 Mar. 22, 2005
REJECTIONS
1. Claims 1–9, 11, and 12 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the applicant regards as the
invention. Final Act. 2–3.
2. Claims 1–9, 11, and 13 are rejected under pre–AIA 35 U.S.C.
§ 103(a) as being unpatentable over Graf and Kettler. Final Act. 3–13.
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OPINION
The Rejection of Claims 1–9, 11, and 12 as Indefinite
Appellant argues that the Examiner’s rejection of claims 1–9, 11, and
12 as being indefinite is erroneous. Appeal Br. 10–11; Reply Br. 3–4. We
agree.
Claims 1 and 7
Independent claims 1 and 7 recite “the shade-relevant information
comprising the entirety of the dependences of shade changes in the form of
differentials of the effect matrix expressed by dL*/dci, da*/dci and db*/dci
for achromatic shades and dL*/dci, dC*/dci and dH*/dci for chromatic
shades.” According to the Examiner, the “term dci is not defined or
explained” in the Specification and it “is unclear in the claim what this term
indicates, but merely appears to be a term for difference or differential,
similar to Δ.” Final Act. 2–3; see Ans. 12–13. The Examiner states that
“[w]hile it is understood that the dL, da, db, dL, dC, and dH values are shade
change values in a CIELAB space, it is not clear if ‘dci’ is intended to
represent anything additional.” Final Act. 2.
Contrary to the Examiner’s findings, the Specification explains the
meaning of the term dci. The Specification states:
In principle the concept of “shade-relevant information”
is understood in the art to refer to shade changes dL*, da* and
db* for achromatic 1 o shades and dL*, dC* and dH* for
chromatic shades, as already elucidated above. Shade changes
of this kind, expressed by dL*, da* and db* for achromatic
shades and dL*, dC* and dH* for chromatic shades, may come
about in a variety of ways in the operation of producing a batch.
Some key influencing factors include . . .
–– fluctuations in the weighing-out of the raw materials for
intermediate production, of pigment pastes, for example, and
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operational fluctuations occurring in the course of this
procedure;
––fluctuations in the weighing-out of the intermediates for
batch production, and operational fluctuations occurring in the
course of this procedure; . . . .
For this purpose it is possible in practice to describe the shade
changes preferably as a function of the concentration of the
intermediates employed. The shade changes can then be
portrayed as differentials: dL*/dci, da*/dci, db*/dci and dL*/dci,
dC*/dci, dH*/dci. In the same way the shade changes can be
captured as a function of the aforementioned operational
parameters.
Spec. 6:8–7:10 (emphasis added). Appellant explains that one skilled in the
art reading the Specification would have understood that “dci represents the
differential of the concentration of the intermediates employed.” Appeal Br.
10; Reply Br. 3. We agree that a person of ordinary skill in the art would
have understood that the Specification discloses that “dci” represents the
differential of the concentration of the intermediates employed and that “ci”
represents the concentration of the intermediates employed.
For these reasons, the Examiner’s rejection of claims 1 and 7 is not
sustained.

Claims 8, 9, 11, and 12
Independent claims 1 and 7 recite “repeating steps iv) v) and vi) until
target color difference is reached.” Claims 8 and 9, which depend from
claim 1, recite that the target color is achieved in no more than three and two
repetitions, respectively, of steps iv, v, and vi. Claims 11 and 12, which
depend from claim 7, also recite that the target color is achieved in no more
than three and two repetitions, respectively, of steps iv, v, and vi.
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According to the Examiner, “the inventive concept in the method of
claims 1 and 7 appears to be that these steps are repeated ‘until a target color
difference is reached,’ as step vii claims,” and this “indicates that each target
shade and starting formula, as applied in the method, will require a different
number of repetitions to achieve the target difference, and would not be
known until values are plugged in.” Final Act. 3. The Examiner states that,
because it “seems that if it were known how many repetitions it would take
(every time) to achieve the target, there would be no need for step vii, and
the particular number of repetitions would be claimed in independent
format,” claims 8, 9, 11 and 12 “seem to conflict with step vii of claims 1
and 7.” Id. The Examiner also states that “if iv) v) and vi) are only
performed once, as in claims 10 and 13, than step vii is not necessary at all,
and it is unclear how this step fits with these claims.” Id.
The Examiner’s rejection is not sustained because claims 8, 9, 10, and
11 further limit the number of repetitions necessary to achieve a desired
shade. Even if steps iv, v, and vi, as recited in the independent claims, are
only performed once, a person of ordinary skill in the art would have
understood that the target color difference would be achieved in “no more
than” the three and two repetition of steps iv, v, and vi recited in the
dependent claims.
For the reasons above, the Examiner’s rejection of claims 1–9, 11, and
12 is not sustained.

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The Rejection of Claims 1–9, 11, and 12
as being Obvious Over Graf and Kettler
The Examiner finds that Graf discloses all of the limitations in claims
1–9, 11, and 12, except for the limitation reciting that “the shade-relevant
information compris[es] the entirety of the dependences of shade changes in
the form of differentials of the effect matrix expressed by dL*/dci, da*/dci
and db*/dci for achromatic shades and dL*/dci, dC*/dci and dH*/dci for
chromatic shades.” Final Act. 4–13; Adv. Act. 2. The Examiner presents
two reasons that Kettler discloses this missing limitation. Final Act. 7–9.
We disagree with both reasons.
First, the Examiner finds that
Kettler teaches using shade-relevant information (abstract
and column 2 lines 19–34); expressed by dL*/dci, da*/dci and
db*/dci for achromatic shades and dL*/dci, dC*/dci and
dH*/dci for chromatic shades (abstract, and column 8 lines 49–
65, unclear whether or not dl, dC, and dH are a subset of
CIELab color space and therefore inherent, also unclear what
dci is intended to represent).
Id. at 7. Appellant argues that the Examiner’s finding is erroneous because
Kettler “does not teach or suggest any possibility of detecting fluctuations in
the raw materials and ingredients, or shade differences, so Kettler does not
teach or suggest the continual updating of an effect matrix with the shade-
relevant information.” Appeal Br. 20; see Reply Br. 5–6.
The Examiner’s findings are not persuasive because the portions of
Kettler cited by the Examiner (i.e., Abstract, column 2, lines 19–34, and
column 8, lines 49–65) do not disclose the concentration of the intermediates
employed (ci), the differential of the concentration of the intermediates
employed (dci), or “shade-relevant information” that is a function of dci, as
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recited in the claims 1–9, 11, and 12. The Examiner does not explain
persuasively why these or other portions of Kettler would inherently disclose
that “shade-relevant information” is a function of dci, as recited in the claims
1–9, 11, and 12.
Second, the Examiner explains that if
Kettler only teaches expressing the shades as dL, da, and
db, and that expressing as dL, dC, and dH are not inherent to
CIELab, and/or that expressing the shade changes using a dci
term are not taught, it would have also been obvious to one
having ordinary skill in the art to have used dL, dC, and dH, dci,
or any other particular form of color expression coordinates
simply as a matter of design choice, since it has been held that
“where the general conditions of a claim are disclosed in the
prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation” . . . ; and, that
selection of a known item based on its suitability for its
intended use is an obvious matter of design choice.
Final Act. 7–8 (citations omitted).
We agree with the Examiner that where “the general conditions of a
claim are disclosed in the prior art, it is not inventive to discover the
optimum or workable ranges by routine experimentation.” In re Applied
Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012). However, “[t]his rule
is limited to cases in which the optimized variable is a ‘result-effective
variable.’” Id. Here, the Examiner fails to establish that (1) the
concentration of the intermediates employed (ci) is a result-effective
variable, or (2) the relevance of the concentration of the intermediates
employed (ci) and “shade-relevant information,” which is a function of dci as
recited in the claims, are well known in the prior art. Thus, the Examiner’s
findings are not persuasive.
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For the reasons above, the Examiner’s rejection of claims 1–9, 11, and
12 is not sustained.
CONCLUSION
The Examiner’s rejections of claims 1–9, 11, and 12 are REVERSED.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–9, 11, 12 112 1–9, 11, 12
1–9, 11, 12 103(a) Graf, Kettler 1–9, 11, 12
Overall
Outcome
1–9, 11, 12

REVERSED