Ex parte Chopin et al.

Board of Patent Appeals and Interferences

Apr 11, 2001

08600150 (B.P.A.I. Apr. 11, 2001)

Although newly added claims 52-79 were physically entered as specified in the1
Advisory Action of Paper No. 27, we note that the part of the amendment of Paper No. 26
which cancelled claims 1-10, 19-27, 32-48, 50 and 51 was never physically entered. Upon
the return of this application to the jurisdiction of the examiner, the examiner should
rectify this error.
1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of
the Board.
Paper No. 37
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte THIERRY CHOPIN
and PIERRE MACAUDIERE
__________
Appeal No. 1998-2288
Application 08/600,150
___________
HEARD: March 22, 2001
___________
Before KIMLIN, PAK, and WALTZ, Administrative Patent Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the
examiner’s refusal to allow claims 52 through 79 as presented
in the amendment subsequent to the final rejection (see the
amendment dated May 22, 1997, Paper No. 26, entered as per the
Advisory Action dated June 6, 1997, Paper No. 27). Claims1
52-79 are the only claims remaining in this application.
Appeal No. 1998-2288
Application 08/600,150
We note that Kinsman was cited by the examiner as prior art relied upon in the2
rejection of the claims on appeal (Answer, page 3) but was not applied in any rejection
(Answer, pages 4-6). Kinsman was applied against process claims 19-27 in a rejection
under section 103 in the Final Rejection dated Jan. 22, 1997, Paper No. 24, page 5,
paragraph 6. However, all claims to the process have been cancelled by the amendment of
Paper No. 26.
2
According to appellants, the invention is directed to a
pigmented composition devoid of toxic metals including a
substance to be colored and a coloring effective amount of the
pigment of formula (I)(Brief, pages 3-4). A copy of
illustrative claim 52 is attached as an Appendix to this
decision.
The examiner has relied upon the following references as
evidence of obviousness:
Bryson 3,663,245 May 16,
1972
Wanmaker et al. (Wanmaker) 3,793,046 Feb. 19,
1974
Borrelli et al. (Borrelli) 4,832,724 May 23,
1989
Lafon et al. (Lafon) 5,118,659 Jun. 2,
1992
Joyce et al. (Joyce) 5,228,910 Jul. 20,
1993
Katz et al. (Katz) 5,268,337 Dec. 7,
1993
Kinsman et al. (Kinsman) WO 89/02871 Apr. 6,
1989
(Published International Application)2
Wu WO 89/08335 Sep. 8,
1989
Appeal No. 1998-2288
Application 08/600,150
3
(Published International Application)
Choy et al. (Choy), “Preparation of 90K Superconductor
Yba Cu O via Oxide Precursors BaCuO and Y Cu O ,” Mat. Res.2 3 7-* 2 2 2 5
Bull., Vol. 24, pp. 867-874, 1989; and
Grigenaite et al. (Grigenaite), Chemical Abstracts, Vol. 115,
Abstract No. 83181, 1994 abstract of “Investigation of yttrium
barium copper oxides by electron loss spectroscopy,” Liet.
Fiz. Rinkinys, 30(6), 698-705, 1990.
Claims 52-63 and 65-79 stand rejected under 35 U.S.C. §
112, first paragraph, as failing to provide an enabling
disclosure (Answer, pages 4-5). Claims 52, 58, 74, 76 and 78
stand rejected under the second paragraph of 35 U.S.C. § 112
as indefinite for failing to particularly point out and
distinctly claim the subject matter which appellants regard as
their invention (Answer, page 6). Claims 52-79 stand rejected
under 35 U.S.C.
§ 103 as unpatentable over Lafon in view of Choy, Wu and
Grigenaite or, in the alternative, over Choy, Wu and
Grigenaite in view of Lafon and further in view of Joyce or
Katz and Bryson, Wanmaker or Borrelli (id.). We reverse all
of the examiner’s rejections for reasons which follow.
OPINION
A. The Rejection under 35 U.S.C. § 112, ¶2
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Application 08/600,150
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The claimed subject matter should be analyzed for
definiteness under the second paragraph of section 112 and
then compliance with the first paragraph before the scope of
the claimed subject matter can be compared to the applied
prior art references in an analysis under 35 U.S.C. § 103.
See In re Angstadt, 537 F.2d 498, 501, 190 USPQ 214, 217 (CCPA
1976), citing In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236,
238 (CCPA 1971).
“The legal standard for definiteness [under section 112,
¶2] is whether a claim reasonably apprises those of skill in
the art of its scope. [Citations omitted].” In re Warmerdam,
33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759 (Fed. Cir. 1994).
“[T]he definiteness of the language employed must be analyzed
- not in a vacuum, but always in light of the teachings of the
prior art and of the particular application disclosure as it
would be interpreted by one possessing the ordinary level of
skill in the pertinent art.” Angstadt, supra; Moore; supra.
The examiner rejects claims 52, 58, 74, 76 and 78 under
the second paragraph of section 112 because the term “dye” is
indefinite and confusing since the examiner does not realize
Appeal No. 1998-2288
Application 08/600,150
5
how a dye could be a substance which could be colored with a
pigment (Answer, page 6).
Appellants argue that the scope of the term “dye” is well
known to one of ordinary skill in the art and the dye is
merely combined with a specified mixed metal oxide to form the
claimed mixture (Brief, page 12).
The initial burden of presenting a prima facie case of
unpatentability rests with the examiner. See In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
The examiner has not established that any term or language
recited in the claims fails to apprise those of ordinary skill
in the art of its scope (see the Answer, page 6). The
examiner has not alleged or established that the scope of the
term “dye” is unclear or unknown to those of ordinary skill in
the art. Any question of how the mixed metal oxide pigment
can be combined with a dye would come under the enablement
requirement of section 112, first paragraph. However, the
examiner has also not met the initial burden of presenting a
prima facie case of unpatentability for this requirement of
section 112.
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Application 08/600,150
6
For the foregoing reasons, we determine that the examiner
has not met the initial burden of establishing that the claim
language fails to reasonably apprise those of skill in the art
of its scope. Accordingly, the rejection of claims 52, 58,
74, 76 and 78 under 35 U.S.C. § 112, ¶2, is reversed.
B. The Rejection under 35 U.S.C. § 112, ¶1
Claims 52-63 and 65-79 stand rejected under 35 U.S.C. §
112, ¶1, for failing to provide an enabling disclosure
(Answer, pages 4-5). The examiner states that, since
appellants argue that one of ordinary skill in the art could
not predict whether the mixed metal oxides of the prior art
would function as pigments, the amount and type of examples
necessary to support broad claims increases due to the
unpredictability of the art (Answer, page 5). The examiner
further states that “[c]laims broad enough to cover a large
number of compositions that do not exhibit the desired
properties fail to satisfy the requirements of 35 USC 112.”
Id.
Appellants argue that the examiner has not met the
initial burden of proof and has no basis for concluding that
persons of ordinary skill in the art, armed with appellants’
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Application 08/600,150
7
specification and working examples, would not be able to
determine which metal oxides within the scope of the claims
work to pigment or color the substance to be colored (Brief,
page 10).
To be enabling, the specification must teach those
skilled in the art how to make and use the full scope of the
claimed invention without “undue experimentation.” In re
Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed. Cir.
1993). When rejecting a claim under the enablement
requirement of section 112, the examiner bears the initial
burden of presenting a reasonable explanation as to why it is
believed that the scope of protection provided by the claim is
not adequately enabled by the description of the invention
provided in the specification, including providing sufficient
reasons for doubting any assertions in the specification as to
the scope of enablement. See Wright, supra; In re Marzocchi,
439 F.2d 220, 224, 169 USPQ 367, 369-70 (CCPA 1971).
We agree with appellants that the examiner has provided
no reasonable basis for doubting the enablement provided in
the application specification. The examiner has concluded
that it would have required undue experimentation to practice
Appeal No. 1998-2288
Application 08/600,150
8
the claimed invention given the disclosure and examples of
appellants’ specification (Answer, page 11). However, the
only determinations the examiner has made are that the art is
unpredictable (based on appellants’ arguments regarding the
rejection under 35 U.S.C. § 103) and there is no guidance in
the specification as to which compounds encompassed by the
claims would function as pigments and which would not (Answer,
pages 8-11). Unpredictability is but one factor to be
considered in determining undue experimentation. See In re
Wands, 858 F.2d 731, 735, 8 USPQ2d 1400, 1404 (Fed. Cir.
1988). Furthermore, although the amount of direction or
guidance presented is another factor in determining undue
experimentation, guidance as to which compounds will not
function as pigments is not required. See Wands, supra;
Answer, page 11. Finally, the examiner admits that “[t]here
is no indication that some of the compounds meeting the
formula would not be suitable as pigments, nor that any
experimentation would be required at all to find suitable
pigments within the claimed formula. In such a case, the
specification would be enabled....” Answer, page 12.
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Application 08/600,150
9
For the foregoing reasons, we determine that the examiner
has not met the initial burden of presenting a prima facie
case of unpatentability. Accordingly, the rejection of claims
52-63 and 65-79 under 35 U.S.C. § 112. ¶1, is reversed.
C. The Rejections under 35 U.S.C. § 103
The claims on appeal stand rejected under section 103 as
unpatentable over Lafon in view of Choy, Wu and Grigenaite or,
in the alternative, over Choy, Wu and Grigenaite in view of
Lafon and further in view of Joyce or Katz and Bryson,
Wanmaker or Borrelli (Answer, page 6). We reverse this
rejection essentially for the reasons stated on pages 16-26 of
the Brief. We add the following reasons for completeness and
emphasis.
The examiner finds that Lafon teaches the particle sizes
of powders as recited in the claims on appeal but fails to
suggest powders of the claimed formula and that these powders
can be used to pigment the claimed substrates (Answer, page
6). Accordingly, the examiner applies Choy and Wu for the
teaching that Y O -BaO-CuO powders are superconductors and2 3
inherently are a pigment since they absorb light in the
visible range and would be insoluble in most typical pigment
Appeal No. 1998-2288
Application 08/600,150
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vehicles (id.). From these findings, the examiner concludes
that “it would have been obvious to have used the notoriously
well known colored mixed metal oxides of Lafon as pigments in
substrates typically colored by metal oxide pigments, since
the secondary references (Choy and Wu) show that the instant
formulae are colored oxides.” Answer, page 7.
Alternatively, the examiner applies Choy, Wu and
Grigenaite to show “that compounds on which the instant
formula reads are known” and applies Lafon to teach the
claimed particle size (Answer, paragraph bridging pages 7-8).
The examiner further applies Joyce, Katz, Bryson, Wanmaker and
Borrelli to show substrates typically colored by other mixed
metal oxides (Answer, pages 7-8). Therefore, the examiner
concludes that it would have been obvious to have used the
notoriously well known colored mixed phase oxides of Choy, Wu
and Grigenaite in substrates typically colored by other mixed
metal oxides, as shown by Joyce, Katz, Bryson, Wanmaker and
Borrelli, and in the particle sizes of Lafon (Answer, page 8).
We disagree with both of the examiner’s rationales. The
examiner and appellants agree that Lafon fails to disclose or
suggest the mixed oxides of formula (I) in claim 52 on appeal
Appeal No. 1998-2288
Application 08/600,150
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or their use as pigments (Answer, page 6; Brief, pages 15-16).
Choy only discloses a mixed metal oxide within the formula of
claim 52 which is useful as an intermediate in the preparation
of a superconductor (Choy, pages 868-869). The examiner has
failed to point to any disclosure or suggestion in Choy that
this intermediate mixed oxide is useful as a pigment.
Similarly, Wu discloses a green phase of Y BaCuO in a2 5
superconductor but the examiner has not established that Wu
discloses or suggests the use of this phase as a pigment in
the form of agglomerates, grains, and mixtures thereof as
required by claim 52 on appeal (Wu, page 3, ll. 8-11; claim
2). Finally, the Grigenaite abstract discloses the same green
phase of Y BaCuO in a superconductor as taught by Wu, although2 5
additionally this abstract teaches a blue phase of Y Cu O . 2 2 5
The examiner has failed to present any convincing evidence or
reasoning that one of ordinary skill in the art would have
recognized the intermediates or phases of Choy, Wu or
Grigenaite as pigments merely because these compounds
themselves possess a color.
The tertiary references to Joyce, Katz, Bryson, Wanmaker
and Borrelli were applied by the examiner to either have given
Appeal No. 1998-2288
Application 08/600,150
For example, we note that it was well known that simple mixed metal oxides such3
as silica-alumina are not generally superconductors while it was equally well known that
Y-Ba-Cu-O is not generally useful as a catalyst, catalyst support, or optical fiber.
12
the “artisan a reasonable expectation of success in obtaining
suitable pigments from any mixed metal oxide” or to show that
it was “notoriously well known that numerous mixed metal
oxides are useful as pigments in the instant substrates.”
Answer, pages 7 and 8, respectively.
Joyce discloses mixed metal oxides that are useful as
pigments and have utility as superconductors (col. 5, ll. 3-
12). However, the specific mixed metal oxides taught by Joyce
are not encompassed by formula (I) in claim 52 on appeal nor
are they similar to the intermediates/phases disclosed by
Choy, Wu and Grigenaite (see Joyce, Examples, col. 8-col. 11).
Katz discloses many mixed metal oxides with several utilities
(col. 1, ll. 15-22) but there is no teaching that all of the
mixed metal oxide formulas possess all the listed utilities or
functions. Furthermore, the Y-Ba-Cu-O formula disclosed by3
Katz does not fall within formula (I) of claim 52 on appeal.
Bryson discloses forehearth color concentrates for coloring
glasses, none of which are similar to the pigments of formula
(I) in claim 52 on appeal (col. 1, ll. 3-5; col. 2, ll. 25-36;
Appeal No. 1998-2288
Application 08/600,150
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and the Examples). Wanmaker discloses a inorganic yellow-
colored pigment useful in paints
having a specified formula which is not similar to formula (I)
in
claim 52 on appeal (col. 1, ll. 3-12; col. 2, ll. 24-47; and
col. 3, ll. 16-17). Borrelli discloses a method for coloring
photochromic glasses including transition metal oxides and/or
rare earth metal oxides as inert glass colorants but with no
disclosure of colorants identical or similar to those of
formula (I) in claim 52 on appeal (col. 1, ll. 6-7; col. 3,
ll. 48-63; and Table 1 in col. 4).
From the foregoing analysis of the Joyce, Katz, Bryson,
Wanmaker and Borrelli reference disclosures, we determine that
the examiner has not presented any reasonable and convincing
factual basis for the conclusion “all of which would have
given the artisan a reasonable expectation of success in
obtaining suitable pigments from any mixed metal oxides”
(Answer, page 7) since each reference only discloses specific
mixed metal oxides that function as pigments. Alternatively,
we determine that the examiner has presented a sufficient
factual basis for establishing that “it [sic, is] notoriously
Appeal No. 1998-2288
Application 08/600,150
14
well known that numerous mixed metal oxides are useful as
pigments in the instant substrates” (Answer, page 8).
However, the examiner has not presented any convincing
evidence or reasons why the references should be combined in
the manner proposed, i.e., why the dissimilar mixed metal
oxide pigments of Joyce, Katz, Bryson, Wanmaker and Borrelli
would have suggested that the particular mixed metal oxides of
Choy, Wu, and Grigenaite, useful as intermediates or phases in
a superconductor, would have been useful as pigments with the
specified substrates. See In re Dembiczak, 175 F.3d 994, 999,
50 USPQ2d 1614, 1617 (Fed. Cir. 1999)(The evidence of a
suggestion, teaching or motivation to combine features of
different references must be clear and particular).
For the foregoing reasons and those set forth in the
Brief, we determine that the examiner has not met the initial
burden of presenting a prima facie case of obviousness.
Accordingly, the rejections of the claims on appeal under 35
U.S.C. § 103 over Lafon in view of Choy, Wu and Grigenaite or,
in the alternative, over Choy, Wu and Grigenaite in view of
Lafon and Joyce, Katz, Bryson, Wanmaker and Borrelli are
reversed.
Appeal No. 1998-2288
Application 08/600,150
15
D. Summary
The rejection of claims 52, 58, 74, 76 and 78 under 35
U.S.C. § 112, ¶2, is reversed. The rejection of claims 52-63
and 65-79 under 35 U.S.C. § 112, ¶1, is reversed. The
rejections of claims 52-79 under 35 U.S.C. § 103 over Lafon in
view of Choy, Wu and Grigenaite or, alternatively, over Choy,
Wu and Grigenaite in view of Lafon, Joyce, Katz, Bryson,
Wanmaker and Borrelli are reversed.
The decision of the examiner is reversed.
REVERSED

EDWARD C. KIMLIN )
Administrative Patent Judge )
)
) BOARD OF PATENT
)
) APPEALS AND
CHUNG K. PAK )
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
)
Appeal No. 1998-2288
Application 08/600,150
16
THOMAS A. WALTZ )
Administrative Patent Judge )
TAW/kis
NORMAN H. STEPNO
BURNS, DOANE, SWECKER & MATHIS
P. O. BOX 1404
ALEXANDRIA, VA 22313-1404
Appeal No. 1998-2288
Application 08/600,150
17
APPENDIX
52. A pigmented/colored composition comprising a
substance to be colored and a coloring effective amount of
agglomerates, grains, or mixtures thereof of a pigment made of
at least one mixed oxide of the formula (I):
R M Cu O2 x y 5
in which R is yttrium, a rare earths metal having an atomic
number ranging from 62 to 71, inclusive, or combination
thereof; M is barium, magnesium, calcium, or strontium; and x
and y are two numbers, the sum x + y of which is equal to 2,
said substance being different from said mixed oxide and being
a synthetic resin, natural rubber, porcelain, crockery,
earthenware, paper, dye, cosmetic, ink, or coating
composition.