Ex Parte Detrie et al

Patent Trial and Appeal Board

Feb 12, 2015

12210453 (P.T.A.B. Feb. 12, 2015)

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.
12/210,453 09/15/2008 Terry J. Detrie FER-18308 6619
7609 7590 02/13/2015
RANKIN, HILL & CLARK LLP
23755 Lorain Road - Suite 200
North Olmsted, OH 44070-2224
EXAMINER
ABU ALI, SHUANGYI
ART UNIT PAPER NUMBER
1731
MAIL DATE DELIVERY MODE
02/13/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TERRY J. DETRIE, RAYMOND E. BARNES,
JACQUELINE C. LIVINGSTON, GARY L. NUCCETELLI,
RICHARD A. PIPOLY, DANIEL R. SWILER, and LEI WANG
____________

Appeal 2013-003509
Application 12/210,453
Technology Center 1700
____________

Before BRADLEY R. GARRIS, TERRY J. OWENS, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’s
rejections under 35 U.S.C. § 103(a) of claim 1 as unpatentable over Wilhelm
et al. (US 5,167,708, issued Dec. 1, 1992 (hereinafter “Wilhelm”)) in view
of Stewart et al. (US 2005/0049347 A1, published Mar. 3, 2005 (hereinafter
“Stewart”)), of claim 12 as unpatentable over Wilhelm in view of Diehl (US
2,309,173, issued Jan. 26, 1943), and of claims 2–6, 8–10, and 13–22 as
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Application 12/210,453

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unpatentable over these references in combination with Sliwinski et al. (US
6,454,848 B2, issued Sept. 24, 2002, (hereinafter “Sliwinski”)). We have
jurisdiction under 35 U.S.C. § 6.
We affirm.

Appellants claim a method for obtaining a chromium-containing
pigment having a corundum crystal structure and having a reduced amount
of water soluble chromium which comprises mixing an additive with
pigment raw materials to form a mixture and heating the mixture, wherein
the additive is selected from a group including aluminum metaphosphate
(claim 1; see also claim 19) or tungstic acid (claim 12).

Copies of representative claims 1 and 12, taken from the Claims
Appendix of the Appeal Brief, appear below.
Claim 1: A method for obtaining a chromium-containing pigment
having a reduced amount of water soluble chromium, the method
comprising:
mixing an effective amount of an additive with one or more raw
material components to form a mixture, wherein the additive is selected
from the group consisting of aluminum metaphosphate, aluminum fluoride,
tungsten oxide, tungstic acid, and mono-ammonium phosphate; and
heating the mixture to a temperature in a range of from about 750°C
to about 1300°C to obtain the chromium-containing pigment, wherein the
pigment has a corundum crystal structure and wherein the reduced amount
of water soluble chromium present in the chromium-containing pigment is
less than would have been present if the additive was not mixed with the one
or more raw material components prior to heating.

Claim 12: A method for obtaining a chromium-containing pigment
having a reduced amount of water soluble chromium, the method
comprising:
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mixing an effective amount of an additive with one or more raw
material components to form a mixture, wherein the additive is selected
from the group consisting of aluminum fluoride, tungsten oxide and tungstic
acid; and
heating the mixture to a temperature in a range of from about 750°C
to about 1300°C to obtain the chromium-containing pigment, wherein the
pigment has a corundum crystal structure and wherein the reduced amount
of water soluble chromium present in the chromium-containing pigment is
less than would have been present if the additive was not mixed with the one
or more raw material components prior to heating.

Appellants do not present separate arguments specifically directed to
the dependent claims under rejection (see App. Br. 8–14). Therefore, the
dependent claims will stand or fall with their parent independent claims of
which claims 1 and 12 are representative.

The Rejection based on Wilhelm and Stewart

Consistent with the Examiner’s findings: Wilhelm discloses a method
for obtaining a chromium-containing pigment having a corundum (as well as
a spinel or hematite) structure which corresponds to the claim 1 method
except that Wilhelm uses a boric and/or phosphoric acid additive rather than
the claimed aluminum metaphosphate (see, e.g., col 1, ll. 5–23, 59–68, col 2,
ll. 3–8); however, Stewart teaches a method for obtaining a chromium-
containing pigment having a spinel structure with reduced unreacted
chromium oxide and free chrome by using an aluminum metaphosphate
additive (see, e.g., ¶¶ 17 and 23). Like the Examiner, we conclude that it
would have been obvious to provide the Wilhelm method with an aluminum
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metaphosphate additive based on a reasonable expectation of successfully
achieving the benefits taught by Stewart.

Appellants argue “[o]ne having ordinary skill in the art would not
have had any confidence or expectation that a mineralizer that was known to
provide a benefit in the production of a pigment having a spinel crystal
structure would provide the same or any benefit in the production of a
pigment having a corundum crystal structure” (App. Br. 9). In support of
this argument, Appellants rely on (1) a reference to Joyce which is said to
disclose that there is no reliable manner of predicting the effect of
mineralizers such as fluorides in a given application (id.) and (2) a
Declaration by Dr. Detrie under 37 C.F.R. § 1.132 (id. at 9–10). Appellants
quote this Declaration as stating “a person of ordinary skill would not have
high expectations that any additive will produce the same effect when used
in a different pigment family” and “it was determined that aluminum
metaphosphate and mono-ammonium phosphate should be tested[,] . . . [b]ut
until the results of such testing were obtained, it was unpredictable whether
such compounds would provide any such benefit in the corundum pigment
family” (id. at 10).

“[O]bviousness cannot be avoided simply by a showing of some
degree of unpredictability in the art so long as there was a reasonable
probability of success.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364
(Fed. Cir. 2007).
Indeed, a rule of law equating unpredictability to patentability,
applied in this case, would mean that any new salt—including
those specifically listed in the ’909 patent itself—would be
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separately patentable, simply because the formation and
properties of each salt must be verified through testing. This
cannot be the proper standard since the expectation of success
need only be reasonable, not absolute.

Id.
These legal principles reveal that Appellants’ argument is not
persuasive. As indicated above, and contrary to Appellants’ apparent belief,
the applied references would have provided one with ordinary skill in this art
with a reasonable expectation that the aluminum metaphosphate additive of
Stewart would be successful in the method of Wilhelm. This reasonable
expectation of success is supported, and Appellants’ argument is
undermined, by the undisputed finding noted above that Wilhelm’s method
uses additives to improve pigments regardless of whether they have a
corundum, spinel, or hematite structure. Further, Appellants’ position is not
supported by either the Joyce reference or the Detrie Declaration. This is
because the Joyce reference appears to have no relevance to the pigments
and additives under consideration and because the Declaration statements
relate to “high expectations” of success and unpredictability “until the
results of such testing were obtained” which are not germane to the legal
standard for a reasonable expectation of success.

For these reasons, we sustain the rejections based on Wilhelm and
Stewart alone or in combination with Sliwinski.

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The Rejections based on Wilhelm and Diehl

As indicated above, the method of Wilhelm corresponds to the claim
12 method except for use of the claimed additive tungstic acid; however,
Diehl teaches using tungstic acid has an addition agent or mineralizer in
order to form improved chromium-containing pigments (col. 1, ll. 14–26,
¶ bridging col. 1–2). These findings support a conclusion that it would have
been obvious to provide Wilhelm with tungstic acid additive in order to
obtain improved pigment as taught by Diehl based upon a reasonable
expectation of success.

Appellants state that the pigments of Diehl “are known to have a
spinel crystal structure” (App. Br. 12) and argue that there is no teaching in
Diehl that use of tungstic acid will reduce the water soluble chromium
content of pigments having either a spinel or corundum crystal structure (id.
at 12–13).

Appellants’ statement that the Diehl pigments have a spinel structure
is not supported by evidence. Moreover, their argument that Diehl contains
no teaching of reducing water soluble chromium in pigments does not reveal
error in the Examiner’s rejection. The reason for combining Wilhelm and
Diehl need not involve Appellants’ problem of reducing water soluble
chromium. “Under the correct analysis, any need or problem known in the
field of endeavor at the time of invention . . . can provide a reason for
combining the elements in the manner claimed.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 420 (2007).
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In light of the foregoing, we also sustain the rejections based on
Wilhelm and Diehl alone or in combination with Sliwinski.

Conclusion

The decision of the Examiner is affirmed.

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).

AFFIRMED

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