Ex Parte Bauer et al

Board of Patent Appeals and Interferences

Jan 29, 2001

08211791 (B.P.A.I. Jan. 29, 2001)

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The opinion in support of the decision being entered
today not written for publication and is not precedent
of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte GERD BAUER, KARL OSTERRIED, CHRISTOPH SCHMIDT,
REINER VOGT, HELGE-BETTINA KNIESS, MICHAEL UHLIG,
NORBERT SCHUL and GUNTHER BRENNER
________________
Appeal No. 1997-3169
Application 08/211,791
________________
ON BRIEF
________________
Before KIMLIN, GARRIS and OWENS, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
ON REQUEST FOR REHEARING
Appellants request a rehearing from our decision mailed on
October 12, 2000 wherein we affirmed the rejection of claims 29,
31-38, 45-54, 60, 61, 64, 65 and 67-69 under 35 U.S.C. § 103 over
the combination of Clark, Saegusa, Persello, Itoh, Noguchi,
Clough, and appellants’ admitted prior art.
Appeal No. 1997-3169
Application 08/211,791
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Appellants argue that their statement that no reference of
record provides a teaching of a process for coating particles
obtained by fragmentation from a solidified liquid precursor on a
substrate with a metal oxide, or the product produced thereby,
addressed the combined teachings of the references as a whole
(request, page 1). Stating that no single reference provides
such a teaching, however, does not address the combined teachings
of the references.
Appellants argue that we misapprehended the significance of
the metal oxide layer being coated on the particles after they
are separated in fragments from a solidified layer on the
substrate (request, page 1). Itoh, appellants argue, is silent
as to the timing of the coating with metal oxide (request,
page 2). The teaching by Itoh, however, that the coating
improves the resistance against chalking and discoloring of the
pigment, would have fairly suggested, to one of ordinary skill in
the art, coating a pigment after fragmentation so that the entire
surface of the pigment is provided with such resistance. The
inquiry under 35 U.S.C. § 103 is not merely what references
expressly teach, but what inferences one of ordinary skill in the
art reasonably would draw from them. See In re Lamberti, 545
F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976); In re Preda, 401
Appeal No. 1997-3169
Application 08/211,791
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F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
Appellants argue that in the Brückner declaration a
temperature of 600°C was applied to the comparative pigments to
test them for heat resistance, and that this temperature was not
the temperature used in preparing the pigments (request, page 2).
The comparative pigments prepared according to Clarke’s method,
appellants argue, exhibit inferior heat resistance compared to
appellants’ pigments. See id. Clarke teaches that good results
generally may be obtained by heating the pigment to 450°C, or a
higher temperature if desired, when dehydrating it during its
preparation, and that the pigment so prepared has good heat
resistance (col. 7, lines 51-55). The Brückner declaration shows
(figure 1) that the comparative pigment made according to
Clarke’s method lost luster and delaminated when it was heated to
600°C, whereas appellants’ pigment, when heated to 850°C
(figures 2 and 3), had an excellent luster and did not
delaminate.
Even if the declaration shows a significant difference
between the heat resistances of the tested pigments, the
declaration is not sufficient for overcoming the prima facie case
of obviousness because, first, as stated in our decision
(page 6), the thicknesses of the layers are not disclosed and,
Appeal No. 1997-3169
Application 08/211,791
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therefore, the significance of any differences shown between the
properties of the pigments is questionable. Second, as explained
in our decision (pages 7-8), the teaching by Itoh that coating
TiO2 with the disclosed materials improves resistance against
chalking and discoloring and, therefore, reasonably appears to
improve gloss, indicates that the improved luster of appellants’
pigment would have been expected by one of ordinary skill in the
art. Third, as explained in our decision (pages 8-9), the
evidence in the declaration is not commensurate in scope with the
claims. Appellants argue (request, page 2) that Itoh does not
suggest applying a metal oxide coating after fragmenting the
pigment. As discussed above, however, one of ordinary skill in
the art would have been led by Itoh to coat a pigment after it
has been fragmented so that the entire surface of each pigment
particle is provided with the disclosed resistance to chalking
and discoloring.
Appellants argue that the board improperly overlooked the
reply brief because its nonentry is not an option for the
examiner (request, page 2). The propriety of the nonentry of a
reply brief is a petitionable matter rather than an appealable
matter. See Manual of Patent Examining Procedure § 1002.02(c)(8)
(7th ed., rev. 1, Feb. 2000). Because the reply brief was not
Appeal No. 1997-3169
Application 08/211,791
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entered into the record prior to our consideration of the appeal,
our refusal to consider the reply brief was proper.
We have considered appellants’ rehearing request but, for
the above reasons, decline to make any change to our decision.
DENIED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
BRADLEY R. GARRIS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
TERRY J. OWENS )
Administrative Patent Judge )
Appeal No. 1997-3169
Application 08/211,791
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