Ex Parte Bujard et al

Patent Trial and Appeal Board

Apr 1, 2016

12668028 (P.T.A.B. Apr. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/668,028 04/21/2010
94799 7590 04/05/2016
Law Office of Shrnti Costales, PLLC
2020 Pennsylvania A venue NW
#310
Washington, DC 20006
FIRST NAMED INVENTOR
Patrice Bujard
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
SE/2-23767/A/PCT 3182
EXAMINER
WESTERBERG, NISSA M
ART UNIT PAPER NUMBER
1618
NOTIFICATION DATE DELIVERY MODE
04/05/2016 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):
shrnti@shrntilaw.com
info@shrntilaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PATRICE BUJARD, PHILIPPE BUGNON,
and MARC BA YSANG
Appeal2014-000427
Application 12/668,028 1
Technology Center 1600
Before ERIC B. GRIMES, ULRIKE W. JENKS, and RYAN H. FLAX,
Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims directed to a pigment comprising perlite having a plate-like structure.
The Examiner rejects claims 1-9 and 11-21 as obvious and for obviousness-
type double patenting. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellants, the real party in interest is Ciba Corporation of
Tarrytown, NY. (Br. 3).
Appeal2014-00427
Application 12/668,028
STATEMENT OF THE CASE
Claims 1-9 and 11-21 are on appeal. Claim 1 is the sole independent
claim, is representative of the claims on appeal, and reads as follows:
1. A pigment, comprising a core of perlite, having two
substantially parallel faces, the distance between which is the
shortest axis of the core, and
(a) a layer of a metal oxide, having a high index of refraction;
and/or
(a) a semi-transparent metal layer with a thickness of between 5
and 25 nm.
(Br. 14, Claims Appendix). Appellants submit that, with regard to the
rejections over the prior art, the present appeal should "stand or fall on the
basis of independent claim l." (Id. at 6). With regard to the double
patenting rejections, Appellants do not separately argue the claims. (Id. at
12-13.) Thus, the claims stand or fall with claim 1.
Appellants request review of the following grounds of rejection:
A. Claims 1-6, 8, 9, 11-19, and 21 rejected under 35 U.S.C.
§ 103(a) as unpatentable over Bujard2 in view of Kishimoto3 and further in
view of Cherepanina. 4
2 Bujard et al., WO 2006/131472 A2, published Dec. 14, 2006 (hereinafter
"Bujard").
3 Kishimoto et al., EP 1 548 071 Al, published June 29, 2005 (hereinafter
"Kishimoto").
4 L.I. Cherepanina, The Use of Perlite in Ceramic Colors, 22 Glass and
Ceramics 371-372 (1965)(translated from Steklo i Kermika).
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Application 12/668,028
B. Claims 7 and 20 rejected under 35 U.S.C. § 103(a) as
unpatentable over Bujard, Kishimoto, and, optionally, Cherepanina, and
further in view of Bujard '379. 5
C. Claims 1-9 and 11-21 provisionally rejected under the
judicially created doctrine of obviousness-type double patenting over claims
1, 3-5, 7-9, 11, 15, 16, and 18-20 ofcopendingU.S. Patent Application No.
11/922,061 (hereinafter "Bujard '061 ")6 in view of Bujard and Kishimoto.
D. Claims 1-9 and 11-21 rejected under the judicially created
doctrine of obviousness-type double patenting over claims 1-15 of
copending U.S. Patent Application No. 13/133,745 (hereinafter "Bujard
'717"). 7
E. Claims 1-9 and 11-21 provisionally rejected under the
judicially created doctrine of obviousness-type double patenting over claims
1-9 and 11-17 of copending U.S. Patent Application No. 12/739,421
(hereinafter "Bujard '421"). 8
5 Bujard, WO 2007/054379 Al, published May 18, 2007.
6 In this decision, when referring to the disclosure ofBujard '061 we refer to
Pub. No. US 2009/0311209 Al, published Dec. 17, 2009.
7 U.S. Patent Application No. 13/133,745 issued as U.S. Patent 8,771,717 B2
on July 8, 2014.
8 The '421 application was abandoned on October 7, 2013, for Appellants'
failure to pay the issue fee and publication fee. The provisional rejection
based on the '421 application is therefore moot.
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Application 12/668,028
F. Claims 1-9 and 11-21 rejected under the judicially created
doctrine of obviousness-type double patenting over claims 1-9 and 11-17 of
copending U.S. Patent Application No. 12/990,813 (hereinafter "Bugnon). 9
FINDINGS OF FACT
FFl. The Specification10 discloses that the invention's "metal
and/or metal oxide coated perlite flakes can be ... treated with a plasma
torch" via the process disclosed by WO 06/131472, i.e., Bujard, to
"promote[] ... uniform crystallinity and/or coating densification." (Spec.
,-i,-i 13-14).
FF2. Bujard discloses that the particles of its disclosed process
can "have any form," but are preferably "platelets (flakes)." (Bujard 2, 11.
17-18).
FF3. Bujard discloses that "[s]uitable substrates which can be
used as [the] base material [of its disclosed plasma torch process]" can
include a variety of materials, including "[p ]articularly preferred [] mica,
Si02 flakes, Ab03 flakes, Ti02 flakes, Fe203 flakes, BiOCl and glass
flakes." (Id. at 2, 11. 22-36).
FF4. The Specification discloses that Ti02 is a preferred
material for the invention's recited "layer of metal oxide, having a high
9 U.S. Patent Application No. 12/990,813 issued as U.S. Patent 8,772,371 B2
on July 8, 2014.
10 In this decision "the Specification" or "Spec" refers to the disclosure of
the application Pub. No. US 2010/0203093 Al, published Aug. 12, 2010.
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Application 12/668,028
index of refraction," and layers of Ti02 can be formed via a process
disclosed by WO 06/131472, i.e., Bujard. (Spec. ,-i 44--45).
FF5. Bujard discloses that"[ e ]specially preferred pigments" of
its disclosed processes include "Mica+ Ti02." (Bujard 12, 11. 21-23).
FF6. Bujard discloses that its subject-particles are "plate-like
particles (flakes, parallel structures) ... having two substantially parallel
faces, the distance between which is the shortest axis of the core." (Id. at 15,
11. 31-34).
FF7. The Specification indicates that "[p ]erlite is a hydrated
natural glass." (Spec. ,-i 64 ).
FF8. Bujard discloses that its disclosed process can utilize
"transparent platelet-like substrates, such as for example, mica or glass."
(Bujard 16, 11. 24).
FF9. Bujard discloses that the particles obtained by the process
likewise disclosed therein can be incorporated into coatings, paints, inks, and
other materials and products. (Id. at 31, 11. 26-27).
FFlO. Kishimoto discloses an optically coherent multilayered
film-coated powder and method( s) of forming a "film-coated powder having
... a clear intended color;" which is understood to mean pigment.
(Kishimoto Abstract; ,-i 7 5).
FFl 1. Kishimoto discloses a variety of materials from which
base particles for its disclosed pigment material and manufacturing process
can be selected, including perlite and micas. (Id. at ,-i,-i 30-32).
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Application 12/668,028
FF12. Cherepanina discloses that perlite, a natural volcanic
glass, can be used in the manufacture of pigment, e.g., colors with low
content of lead. (Cherepanina 371).
DISCUSSION
A. Rejection of claims 1-6, 8, 9, 11-19, and 21under35 U.S.C.
§ 103(a) as unpatentable over Bujard, Kishimoto, and Cherepanina.
Appellants argue that mica particles would not have been understood
by the person of ordinary skill in the art at the time of the invention to be
interchangeable or substitutable with perlite for use in a pigment as claimed
(as exemplified by independent claim 1 ). We are not persuaded by
Appellants' contentions.
The Examiner finds Bujard disclosed (e.g., 2, 11. 22-36) the use of a
substantial range of suitable base materials, specifically including mica, that
can be coated in the fashion of the appealed claims to produce a pigment. 11
(See Final Action 4; Ans. 2-5). The Examiner finds that Kishimoto
similarly disclosed (at paragraphs 12 and 30-32) a range of suitable base
materials, including mica and perlite, which can be coated to produce
pigment. 12 (See Final Action 4; Ans. 3--4). Appellants do not dispute the
11 The appealed application itself also discloses (Spec. ,-i 2) "[i]nterference
pigments having a core consisting of a transparent carrier material, such as,
for example, natural, or synthetic mica, Si02, or glass, are known." This is
noteworthy because it illustrates Appellants' understanding that the
materials mica and glass were known, suitable and substitutable materials
for pigment substrates.
12 Moreover, Cherepanina (also cited by the Examiner in rejecting the
appealed claims) discloses (at 3 71) that per lite, a natural volcanic glass, can
be used in the manufacture of pigment, e.g., colors with low content of lead.
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Application 12/668,028
appropriateness of this combination, but argue that the Examiner's reasoning
was not clear and detailed. We disagree.
The Examiner determined that each of Bujard and Kishimoto are
directed to pigments, including mica and, in Kishimoto' s case, perlite,
among a list of other, substitutable materials for substrates. "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).
We agree with the Examiner's conclusion that, based on the combined
teachings of these references, it would have been obvious "to use perlite in
place of the materials such as mica as the base material in the coated flakes
taught by Bujard." (Ans. 4). In addition, the Examiner finds that Bujard
disclosed (at 14, 18, and 20) a layer of metal oxide (e.g., Ti02) having a high
refractive index (e.g., greater than about 1.65), coated over the particle
substrate. (Ans. 3). This reads on the respective claim limitation.
Appellants do not dispute this.
Further, the Examiner determined Bujard disclosed (at 2, 11. 18-20)
that the particles of its process can have any form, with any high aspect ratio
materials such as platelets (flakes), rod-like materials and fibers being
preferred. (See Ans. 2). We agree. Bujard states that its particles can be
"plate-like particles (flakes, parallel structures) ... having two substantially
Both Kishimoto and Cherepanina support the Examiner's position that the
materials mica and perlite are interchangeable for use in pigments.
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Application 12/668,028
parallel faces, the distance between which is the shortest axis of the core."
(FF6.)
Appellants do not argue any other claim limitations. 13
For these reasons, we affirm the obviousness rejection of claim 1.
Appellants do not separately argue dependent claims 2-6, 8, 9, 11-19, and
21. (Br. 6). Therefore, these claims fall with claim 1. 3 7 C.F .R.
§ 41.37(c)(l)(iv).
B. Rejection of claims 7 and 20 under 35 U.S.C. § 103(a) as
unpatentable over Bujard, Kishimoto, (optionally) Cherepanina, and
Bujard '379.
On appeal, Appellants do not argue the rejection of claims 7 and 20
independently of claim 1 (or at all). For the reasons set forth above
regarding the rejection of claims 1-6, 8, 9, 11-19, and 21, the respective
rejection of claims 7 and 20 under 35 U.S.C. § 103(a) is also affirmed.
13 Appellants argue that the perlite recited by claim 1 has advantages over
mica when used as pigment (see, e.g., Br. 7), however no such
characteristics are recited by the appealed claims. It is well established that
limitations not appearing in the claims cannot be relied upon for
patentability. In re Self, 671F.2d1344, 1348 (CCPA 1982).
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C. Provisional rejection of claims 1-9 and 11-21 under the
judicially created doctrine of obviousness-type double patenting over
claims 1, 3-5, 7-9, 11, 15, 16, and 18-20 ofBujard '061 in view of
Bujard and Kishimoto.
The co-pending claims of Bujard '061 were last presented in
prosecution, as amended, on November 12, 2015. These claims were finally
rejected on February 25, 2016. Current claim 1 of Bujard '061 recites:
1. (Currently Amended) A pigment, comprising a plate-like
substrate of glass having an average thickness of from < 1 µm,
and
(a) a dielectric material, having a high index of refraction greater
than 1.65; or
(a) a thin semi-transparent metal layer,
wherein the glass substrate consists ofECR glass having> 0.1 %
Ti02, and has a defined thickness in the range of± 40% of the
average thickness,
wherein the pigment has a length of from 2 µm to 5 mm, a width
of from 2 µm to 2 mm, and a ratio of length to thickness of at
least 5: 1, and
wherein the ECR glass comprises Si02 (63-70%), Ab03 (3-6%),
Cao (4-7%), MgO (1-4%), B203 (2-5%), Na20 (9-12%), K20 (0-
3%), Ti02 (>0.1-4%), and ZnO (1-5%).
The Appellants argue that synthetic glass flakes (as per Bujard '061)
are significantly different from perlite (per the appealed claims) such that the
subject matter of the appealed claims would not have been obvious over the
Bujard '061 claims. We disagree. The above-discussed portions of the
Bujard and Kishimoto references illustrate that glass is a suitable substrate
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Application 12/668,028
for pigment and that it is interchangeable or substitutable with mica or
perlite. 14 (See FF3, FFl 1, Final Action 4).
Therefore, the subject matter of appealed claim 1 would have been
obvious to a person of ordinary skill in the art over the identified claims of
Bujard '061.
For these reasons, the respective rejection of claims 1-9 and 11-21
under the judicially created doctrine of obviousness-type double patenting is
affirmed.
D. Rejection of claims 1-9 and 11-21 under the judicially created
doctrine of obviousness-type double patenting over claims 1-15 of
Bujard '717.
U.S. Patent Application No. 13/133,745 issued as Bujard '717 on July
8, 2014. Claim 1 of Bujard '717 recites as follows:
1. A pigment, comprising a plate-like substrate of perlite, and
(a) a layer of a dielectric material and/or
(a') a metal layer,
14 The appealed application itself discloses (Spec. iJ 2) that "[i]nterference
pigments having a core consisting of a transparent carrier material, such as,
for example, natural, or synthetic mica, Si02, or glass, are known." This is
noteworthy in that the Appellants have acknowledged that mica and glass
are well known substitutes for one another in pigments. Moreover, Bujard
'061 discloses (at 3, 11. 1-3) that "[g]lass flakes for the purpose of [its]
invention include any of the known grades such as A-glass, E-glass (high
resistivity makes E-glass suitable for electrical laminates), C-glass and ECR-
glass (corrosion grade glass) materials." This is noteworthy in that the glass
recited by Bujard '061 was well known.
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Application 12/668,028
wherein said plate-like substrate of perlite does not contain 3D
twin structure particles in an amount of greater than 5% by
weight.
The Appellants argue that the claims of Bujard '717 do not recite
perlite "having two substantially parallel faces, the distance between which
is the shortest axis of the core," as recited by appealed claim 1. This
argument is not persuasive. The claims of Bujard '717 (e.g., claim 1,
reproduced above) recite "a plate-like substrate ofperlite." Thus, the subject
matter of appealed claim 1 would have been obvious to a person of ordinary
skill in the art over the identified claims of Bujard '717.
For these reasons, the respective rejection of claims 1-9 and 11-21
under the judicially created doctrine of obviousness-type double patenting is
affirmed.
E. Provisional rejection of claims 1-9 and 11-21 under the
judicially created doctrine of obviousness-type double patenting over
claims 1-9 and 11-17 of Bujard '421.
The Bujard '421 application was abandoned on October 7, 2013, for
Appellants' failure to pay the issue fee and publication fee. For this reason,
the respective rejection of claims 1-9 and 11-21 under the judicially created
doctrine of obviousness-type double patenting is dismissed as moot.
F. Rejection of claims 1-9 and 11-21 under the judicially created
doctrine of obviousness-type double patenting over claims 1-9 and
11-17 of Bugnon.
U.S. Patent Application No. 12/990,813 issued as Bugnon on July 8,
2014. Claim 1 of Bugnon recites as follows:
1. A pearlescent pigment comprising a platelet-shaped substrate,
a metal oxide coating comprising:
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Application 12/668,028
a metal oxide layer having a refractive index of greater than 1. 8;
and
a protective layer,
wherein the protective layer comprises a metal oxide/hydroxide
layer and optionally boroxide, applied to which is an organic
aftercoat of an acrylic copolymer,
wherein the metal oxide/hydroxide of the protective layer is
selected from oxides/hydroxides of silicon (silicon oxide, silicon
oxide hydrate), aluminium, zirconium, magnesium, calcium,
iron(III), yttrium, cerium, zinc and combinations thereof, and
wherein the acrylic copolymer comprises as copolymerized units
the following monomers
(A) an ethylenically unsaturated monomer containing at least one
ammo group;
(B) an ethylenically unsaturated monomer containing no amino
group;
(C) optionally a hydroxy- or alkoxyalkyl(meth)acrylate of the
formula
CH2 = CH(R1)-COO-(C1H2t)-OR2
(D) a (poly)alkyleneglycolmono(meth)acrylate of the formula
CH2 = CH(R1)-COO-(CmH2mO)-OR2
wherein R1 is hydrogen or methyl and R2 is hydrogen or C1-
C6alkyl, tis an integer of 2, 3, 4, 5 or 6; and mis an integer of 2
or 3 and n is an intekger [sic] of 2 to 20.
The Appellants argue that the claims of Bugnon, like those of Bujard
'717, do not cover perlite "having two substantially parallel faces, the
distance between which is the shortest axis of the core," as recited by
appealed claim 1. This argument is not persuasive. The claims of Bugnon
(e.g., claim 1, reproduced above) recite a "pearlescent pigment comprising a
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Application 12/668,028
platelet-shaped substrate," and the substrate can be perlite (which is
expressly recited in claim 4 of Bugnon). Thus, the subject matter of
appealed claim 1 would have been obvious to a person of ordinary skill in
the art over the identified claims of Bugnon.
For these reasons, the respective rejection of claims 1-9 and 11-21
under the judicially created doctrine of obviousness-type double patenting is
affirmed.
SUMMARY
The rejection of claim 1-6, 8, 9, 11-19, and 21under35 U.S.C.
§ 103(a) as unpatentable over Bujard, Kishimoto, and Cherepanina is
AFFIRMED.
The rejection of claims 7 and 20 under 35 U.S.C. § 103(a) as
unpatentable over Bujard, Kishimoto, (optionally) Cherepanina, and Bujard
'379 is AFFIRMED.
The rejection of claims 1-9 and 11-21 under the judicially created
doctrine of obviousness-type double patenting over claims 1, 3-5, 7-9, 11,
15, 16, and 18-20 ofBujard '061, in view ofBujard, and Kishimoto is
AFFIRMED.
The rejection of claims 1-9 and 11-21 under the judicially created
doctrine of obviousness-type double patenting over claims 1-15 of Bujard
'717 is AFFIRMED.
The rejection of claims 1-9 and 11-21 under the judicially created
doctrine of obviousness-type double patenting over claims 1-9 and 11-17 of
Bujard '421 is DISMISSED.
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The rejection of claims 1-9 and 11-21 under the judicially created
doctrine of obviousness-type double patenting over claims 1-9 and 11-17 of
Bugnon is AFFIRMED.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIRMED
14