Ex Parte EnomuraDownload PDFPatent Trial and Appeal BoardDec 29, 201613121393 (P.T.A.B. Dec. 29, 2016) Copy Citation 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. 13/121,393 03/28/2011 Masakazu Enomura 0037-0265PUS1 8527 127226 7590 01/03/2017 Birch, Stewart, Kolasch & Birch, LLP P.O. Box 747 Falls Church, VA 22040-0747 EXAMINER MANGOHIG, THOMAS A ART UNIT PAPER NUMBER 1788 NOTIFICATION DATE DELIVERY MODE 01/03/2017 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): mailroom @ bskb. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MASAKAZU ENOMURA1 Appeal 2016-001161 Application 13/121,393 Technology Center 1700 Before CHUNG K. PAK, JEFFREY T. SMITH, and WESLEY B. DERRICK, Administrative Patent Judges. DERRICK, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-5 and 9-12.2 We have jurisdiction pursuant to 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER Appellant’s claimed invention is generally directed to copper phthalocyanine pigment containing a particular crystal form of copper 1 According to Appellant, the Real Party in Interest is M. TECHNIQUE CO., LTD. Appeal Brief filed February 24, 2015 (“App. Br.”), 1. 2 Claims 6-8 are withdrawn from consideration. Final Office Action entered May 21, 2014 (“Final Act.”), 2. Appeal 2016-001161 Application 13/121,393 phthalocyanine—an alpha form—that exhibits a transmission spectrum at 380 to 780 nm having a highest transmittance wavelength (L max) of less than 478 nm. Spec. Abstract. Claim 1 is illustrative: 1. A copper phthalocyanine pigment containing a crystal form of copper phthalocyanine microparticles, wherein the crystal form of the copper phthalocyanine microparticles is an alpha-form, and a wavelength (Lambda-max) is shorter than 478 nm to give the maximum transmittance of the transmission spectrum between 380 nm and 780 nm. App. Br. 14 (Claims Appendix). REJECTION In the Examiner’s Answer mailed August 31, 2015 (“Ans.”), the Examiner maintains the final rejection of claims 1-5 and 9-12 under 35 U.S.C. § 103(a) as obvious over Langley (US 4,104,277, issued August 1, 1978) and JP 2002-189119 A (“JP ’119”).3 DISCUSSION Having carefully reviewed the Examiner’s rejection in light of arguments advanced by Appellant in the Appeal Brief and Reply Brief4, we are not persuaded that the Examiner erred reversibly in concluding that claims 1-5 and 9-12 are unpatentable for obviousness. We add the following. 3 Appellant does not contest the Examiner’s reliance on the English machine translation of JP 2002-189119 A. See generally App. Br. 4 Reply Brief filed October 30, 2015 (“Reply Br.”). 2 Appeal 2016-001161 Application 13/121,393 Appellant argues claims 1-5 and 9-12 together on the basis of claim 1, to which we limit our discussion. App. Br. 6-10. The Examiner finds that Langley discloses an alpha-form copper phthalocyanine pigment, but acknowledges that Langley does not disclose that the alpha-form copper phthalocyanine pigment has a wavelength (Lambda-max) shorter than 478 nm to give the maximum transmittance of the transmission spectrum between 380 nm and 780 nm. final Act. 2-3; Langley col. 1,11. 41^43. To address this deficiency in Langley, the Examiner relies on JP ’ 119’s disclosure of copper phthalocyanine pigment having a wavelength (Lambda-max) of less than 478 nm to give the maximum transmittance of the transmission spectrum between 380 nm and 780 nm. Pinal Act. 3; JP ’119 claim 1,^1. The Examiner finds that JP ’119 discloses that the copper phthalocyanine pigment having these properties solves the problems of copper phthalocyanine pigments having insufficient permeability of a blue color when used as a color filter. Pinal Act. 4; JP ’119^4-6. The Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the alpha copper phthalocyanine pigment disclosed in Langley to have a wavelength (Lambda-max) shorter than 478 nm to give the maximum light transmittance of the transmission spectrum between 380 nm and 780 nm in order to obtain a copper phthalocyanine pigment having superior properties when used as a colored light filter, as disclosed in JP ’119. Pinal Act. 4. In so concluding, the Examiner has concluded de facto that it also would have been obvious to one of ordinary skill in the art at the time of the invention to do so using the process of JP ’119. 3 Appeal 2016-001161 Application 13/121,393 Appellant argues that JP ’119 discloses solvent salt milling of crude copper phthalocyanine pigment, and contends that this process yields an epsilon-form copper phthalocyanine pigment. App. Br. 7. Appellant argues that if the alpha-form copper phthalocyanine pigment of Langley were processed by solvent salt milling as taught by JP ’119, the alpha-form copper phthalocyanine pigment of Langley would become an epsilon-form copper phthalocyanine, and Appellant contends that the proposed combination of Langley and JP ’119 therefore would not result in an alpha-form copper phthalocyanine as recited in claim 1. App. Br. 7-8. In support of these arguments, Appellant relies on a Declaration of the inventor, Masakazu Enomura, submitted to the Patent Office on February 5, 2014 (“the First Enomura Declaration”), which discusses an English translation of paragraph 4 of WO 2009/004848 that was also submitted to the Patent Office on February 5, 2014. App. Br. 7-8; First Enomura Declaration 2. The first Enomura Declaration states that paragraph 4 of WO 2009/004848 teaches that solvent salt milling is a process for producing epsilon-form copper phthalocyanine from alpha-form copper phthalocyanine. First Enomura Declaration 2. The first Enomura Declaration further states that the process described in paragraph 4 of WO 2009/004848 is the same as the process disclosed in JP ’119, and the Declaration indicates that the process of JP ’119 will therefore always yield an epsilon-form copper phthalocyanine. Id. However, as the Examiner points out, contrary to Appellant’s arguments and the statements in the first Enomura Declaration, the solvent salt milling processes described in paragraph 4 of WO 2009/004848 and JP ’119 differ. Final Act. 7. Specifically, the process described in paragraph 4 Appeal 2016-001161 Application 13/121,393 4 of WO 2009/004848, inter alia, utilizes an epsilon-form copper phthalocyanine as a seed particle, while the solvent salt milling process described in JP ’119 does not involve use of such a seed particle. JP ’119 21-23. To address this difference, Appellant submitted a second Declaration of Masakazu Enomura to the Patent Office on August 21, 2014 (“the Second Enomura Declaration”), which states that the seed particle only accelerates crystal transformation, thereby shortening production time, and does not affect “the main part of the solvent salt milling processing.” Second Enomura Declaration 3. The second Enomura Declaration thus maintains that “the processes of WO 2009/004848 and JP 2002-189119 are substantially the same.” Id. We do not find the proffered opinions to be sufficiently supported by any other evidence of record to bear the evidentiary burden required to rebut the Examiner. Both of the Enomura Declarations lack adequate corroboration of the proffered opinion that the solvent salt milling process described in JP ’119 would produce epsilon-form copper phthalocyanine where the opinion is grounded on the process disclosed in JP ’119 being the same, or substantially the same, as the process for producing epsilon-form copper phthalocyanine described in paragraph 4 of WO 2009/004848 and the only evidence that the seed particle is immaterial to the crystal form obtained are statements of opinion to that effect. First Enomura Declaration 2; Second Enomura Declaration. 3. In particular, there is no corroborating evidence that the process of JP ’119 that does not include an epsilon-form seed particle would yield, or be expected to yield, an epsilon-form on the basis that such a product is formed in the WO 2009/004848 process which includes use of an epsilon-form seed particle. It follows that we decline to 5 Appeal 2016-001161 Application 13/121,393 give the opinions full evidentiary weight. In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”); Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“In giving more weight to prior publications than to subsequent conclusory statements by experts, the Board acted well within [its] discretion.”); Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (The Board has discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”). Accordingly, we find the preponderance of evidence, including the Enomura Declarations, fail to sufficiently support Appellant’s contention that the process disclosed in JP ’119 would yield epsilon-form copper phthalocyanine rather than an alpha-form. Thus, Appellant’s arguments are not persuasive that the combined disclosures of Langley and JP ’119 would not result in an alpha-form copper phthalocyanine as recited in claim 1. Appellant presents additional arguments regarding the patentability of the subject matter of claim 1 for the first time in the Reply Brief. Compare Appeal Br. with Reply Br. 3-7. While presented as being responsive “to new points of argument” (Reply Br. 2-3), Appellant’s new arguments are particularly focused on the Examiner’s position that the combination would result in an alpha-form copper phthalocyanine (Reply Br. 3-7), which are, therefore, merely responsive to statements to that effect made by the Examiner in the Final Office Action from which the present appeal was taken, which were reiterated by the Examiner in the Answer (Copy with citationCopy as parenthetical citation