Ex Parte Hager et al

Patent Trial and Appeal Board

Sep 6, 2013

10544041 (P.T.A.B. Sep. 6, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/544,041 08/02/2005 Harald Hager 7601/84395 4934
66991 7590 09/06/2013
LAW OFFICE OF MICHAEL A. SANZO, LLC
15400 CALHOUN DR.
SUITE 125
ROCKVILLE, MD 20855
EXAMINER
BOYLE, ROBERT C
ART UNIT PAPER NUMBER
1764
MAIL DATE DELIVERY MODE
09/06/2013 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 EVONIK DEGUSSA GmbH
Inventors: Harald Hager, Thomas Hasskerl, Gunther Ittmann,
Roland Wursche and Klaus-Dieter Schubel
____________________

Appeal 2012-005125
Application 10/544,041
Technology Center 1700
____________________

Before FRED E. McKELVEY, RICHARD E. SCHAFER and
RICHARD TORCZON, Administrative Patent Judges.

McKELVEY, Administrative Patent Judge.

DECISION ON APPEAL

Background 1
Evonik Degussa GmbH (“applicant”), the real party in interest (Brief, 2
page 2), seeks review under 35 U.S.C. § 134(a) of a final rejection dated 18 March 3
2011. 4
The appeal is being deciding concurrently with a related appeal in Ex parte 5
Evonik Degussa GmbH, Appeal 2013-000895. 6
The application on appeal was filed in the PTO on 02 August 2005. 7

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The application has been earlier filed on 18 February 2005 as International 1
Application PCT/EP/2005/001687, which entered the national stage as to the 2
United States. 35 U.S.C. § 371. 3
Applicant claims priority of (1) German patent application 4
10 2004 051.457.7, filed 22 October 2004, and (2) German patent application 5
20 2004 003 362.3, filed 04 March 2004. 6
The application has been published as U.S. Patent Application Publication 7
2006/0281846 A1. 8
Prior art 9
In support of prior art rejections, the Examiner relies on the following 10
evidence. 11
Kondo

U.S. Patent 5,830,568

03 Nov. 1998

van Baal et al.
“van Baal”
U.S. Patent 6,355,723 B1

12 Mar. 2002

Yoshihara et al.
“Yoshihara”
U.S. Patent Application Publication
2003/0069350
10 Apr. 2003

Joachimi et al.
“Joachimi”
U.S. Patent Application Publication
2003/0130381 A1
10 July 2003

Applicant does not contest the prior art status of the Examiner’s evidence. 12
We have jurisdiction under 35 U.S.C. § 134(a). 13
Claims on appeal 14
Claims 58, 60-63, 66-67, 69, 74 and 76-86 are on appeal. Brief, pages 4 and 15
16-19; Answer, page 3. The Answer indicates that Claim 68 is on appeal. Id. 16

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Claim 68 has been cancelled (Amendment dated 30 January 2011) and therefore is 1
not involved in the appeal. 2
Rejections 3
In the Answer, the Examiner has maintained the following rejections: 4
Rejection 1 5
Claims 58, 61 and 69 stand rejected under § 102 as anticipated by 6
Yoshihara. Answer, page 5 7
Rejection 2 8
Claims 58, 60-61 and 63 stand rejected under § 103 over van Baal. Answer, 9
page 5. 10
In the Answer, Claims 72-73 are included in the statement of Rejection 2. 11
However, Claims 72-73 have been cancelled and therefore are not involved in the 12
appeal. 13
Rejection 3 14
Claims 62 and 66-67 stand rejected under § 103 over van Baal and Kondo. 15
Answer, page 8. 16
Rejection 4 17
Claims 58, 60, 66-67, 74, 76-77, 80, 82 and 84 stand rejected under § 103 18
over Joachimi, Kondo and van Baal. Answer, page 9. 19
In the Answer, Claims 64-65, 68 and 75 are included in the statement of 20
Rejection 4. However, Claims 64-65, 68 and 75 have been cancelled and therefore 21
are not involved in the appeal. 22

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In the Answer, Claims 74, 80, 82 and 84 are not included in the statement of 1
Rejection 4, but are mentioned in the body of the Rejection 4. Claims 74, 80, 82 2
and 84 are therefore involved in the appeal of Rejection 4. 3
Rejection 5 4
Claims 74 and 76-86 stand rejected based on nonstatutory obviousness-type 5
double patenting. Answer, page 12. Applicant states that the “rejection is 6
presently being held in abeyance and . . . [applicant is] not seeking review of this 7
rejection.” Brief, page 8. In the Final Rejection, the Examiner observes the 8
following (page 3): 9
Applicant’s request for [the double patenting rejection to be 10
held in] abeyance is acknowledged to the extent that applicant’s lack 11
of a response to the cited rejection will not be treated as non-12
responsive. However, since the rejection is proper it will be 13
maintained until such time as a proper response to it is filed or 14
conditions appropriate for removal of the rejection are present. 15
The double patenting rejection is based on Claims 61-80 in Application 16
10/591,289, an application involved in related Appeal 2013-000895. 17
The following Table 1 sets out in schematic form Rejections 1-5 and the 18
claims subject to each rejection. 19

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Table 1
Claim Rejection 1 Rejection 2 Rejection 3 Rejection 4 Rejection 5

Yoshihara

van Baal
van Baal
Kondo
Joachimi
van Baal
Kondo
Double
patenting
Composition of matter claims
58 x x x
60 x x
61 x x
62 x
63 x
66 x x
67 x x
69 x
Method claims
74 x x
76 x x
77 x x
78 x
79 x
80 x x
81 x
82 x x
83 x
84 x x
85 x
86 x
1
Invention 2
Independent Claim 58, which we reproduce from the Claims Appendix of 3
the Brief (page 16), reads [matter in brackets and some indentation added; 4
principal limitations in issue in italics]: 5

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A transparent, translucent, or opaque laser-weldable plastic 1
composition comprising: 2
a) laser transparent plastic material comprising colorants, 3
the colorants consisting of one or more compounds selected 4
from the group consisting of 5
[1] pigment orange 64; [2] solvent orange 60; [3] solvent 6
orange 106; [4] solvent orange 111; [5] pigment red 48; 7
[6] pigment red 101; [7] pigment red 144; [8] pigment red 8
166; [8] pigment red 178; [9] pigment red 254; [10] solvent 9
red 52; [11] solvent red 111; [12] solvent red 135; 10
[13] solvent red 179; [14] pigment green 7; [15] pigment 11
green 17; [16] pigment green 50; [17] solvent green 3; 12
[18] solvent green 20; [19] pigment blue 15; [20] pigment blue 13
29; [21] pigment blue 36; [22] pigment yellow 93; 14
[23] pigment yellow 110; [24] pigment yellow 150; 15
[25] pigment yellow 180; [26] pigment yellow 184; 16
[27] solvent yellow 21; [28] solvent yellow 93; [29] pigment 17
brown 24; [30] pigment violet 19; [31] pigment violet 13; and 18
[32] pigment violet 46; and 19
b) nanoscale particles selected from the group consisting of: 20
[1] metal oxides; [2] mixed metal oxides; [3] complex oxides; 21
[4] metal sulfides; [5] borides; [6] phosphates; [7] carbonates; 22
[8] sulfates; and [9] nitrides; 23

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wherein when said plastic composition is laser welded to a join part at 1
a laser wavelength [of] 800-1500 nm, 2
[1] the colorants present in said composition are all laser 3
transparent and 4
[2] said plastic composition is laser weldable due to said 5
nanoscale particles. 6
Analysis 7
Rejection 1 8
Claims 58, 61 and 69 stand rejected under § 102 as anticipated by 9
Yoshihara. Answer, page 5. 10
Yoshihara Example 5 describes a composition with the elements set out in 11
Table 2. 12
Table 2—Yoshihara Example 5
Element Amount Amount in film
Yoshihara Component (A)
γ-glycidoxypropyltrimethoxysilane 53 g 53 g
γ-amino-propyltriethoxysilane 29 g 29 g
Methyltrimethoxysilane 18 g 18 g
Methoxysilane 0.92 g 0.92 g
Yoshihara Component (B)
BF3 (an acid catalyst) 0.2 g 0.2 g
Yoshihara Component (C)
ITO 2 (indium-titanium oxide dispersion
having an average particle size of 30 nm)
(¶¶ 0089 and 0095, first line referring to
(14))
0.5 g 0.5 g
Yoshihara Component D
PGMA—propylene glycol monoether
acetate (solvent) 20 g Not present

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DPMP—dipropylene glycol monomethyl
ether propanol (solvent)1 10 g Not present
Yoshihara Component E
DHB—2,4-di-hydroxybenzophenone
(stabilizer) 0.05 g 0.05 g
Yoshihara Component F
D1—C.I. Direct Blue 77 Not stated Not stated
Total 101.67 g
Calculated wt % in plastic material (0.5/101.67) x 100 = 0.49

The calculated wt. % of ITO in the plastic material of Example 1 (which has 1
no colorant) is calculated to be [(0.5)/(85 + 80 + 50 + 5 + 0.5)] x 100 = 0.23. In 2
making the calculation, an assumption is made that little if any solvent remains in 3
the plastic. 4
The components present in Yoshihara Example 5 differ from the subject 5
matter of Claim 58 in that Yoshihara dye Component (F), C.I. Direct Blue 77, does 6
not fall within the scope of the dyes listed in Claim 58. 7
Yoshihara discusses Component (F) as follows (¶ 0046) [dyes and pigments 8
mentioned in Claim 58 set out in bold]: 9
The component (F) used in the present invention is selected from dyes 10
and/or pigments of high weather resistance. Examples of useful dyes 11
include a direct dye such as C. I. Direct Yellow 98, C. I. Direct Red 12

1 The reference in ¶ 0093 to propylene glycol monoethyl ether acetate is believed
to be a typo in which “acetate” should be “propanol” in order to be consistent with
the reference to “DPMP” in Yoshihara Table 1 and the last two lines of ¶ 0036.
See also ¶ 0099, lines 2-3 discussing Example 6.

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220 and C. I. Direct Blue 77 [described in Example 5], and an acid 1
dye such as C. I. Acid Yellow 112, C. I. Acid Red 256 and C. I. Acid 2
Blue 182. While, examples of useful pigments include an inorganic 3
pigment such as C. I. Pigment Yellow 157, C. I. Pigment Red 101 4
and C. I. Pigment Blue 29 and an organic pigment such as C. I. 5
Pigment Yellow 154, C. I. Pigment Red 122 and C. I. Pigment Blue 6
15:1. Such dye and/or pigment may be used independently or in 7
combination thereof. There may be properly used fluorescent 8
pigments for assuming fluorescent colors, luminescent pigments 9
which continuously glow after discontinuing irradiation, pearlescent 10
pigments for assuming a pearl effect, thermo-color pigments which 11
change a color depending on temperature, hydrophilic pigments for 12
providing hydrophilic properties, functional pigments which reflect 13
infrared light or heat rays, etc., if necessary [v]arious pigments are 14
included as in the following: a fluorescent pigment comprising Acid 15
Yellow 73 dissolved in an acrylic resin; a luminescent pigment 16
comprising strontium aluminate as the chief ingredient; a pearlescent 17
pigment comprising mica coated with titanium dioxide as the chief 18
ingredient; a thermo-color pigment comprising microcapsulated 19
Rhodamine B lactam/isooctyl gallate/cetyl alcohol, a hydrophilic 20
pigment comprising silica and titania as the chief ingredient; and the 21
like. 22
All the elements of Claim 58 are described by Yoshihara. But, there is no 23
explicit description of the use of C. I. Pigment Red 101 or C. I. Pigment Blue 29 24

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as a replacement for C. I. Direct Blue 77 in Yoshihara Example 5. Nor is there any 1
discussion in Yoshihara (1) as to whether all the dyes are transparent to laser light 2
(Reply Brief, page 2) or (2) that only laser transparent colorants should be used to 3
make the Yoshihara’s film-forming composition (Reply Brief, page 4) or (3) that 4
all of the listed dyes would be laser transparent at 800-1500 nm (Brief, page 10). 5
On balance, we cannot find that Yoshihara anticipates Claim 58. 6
Rejection 1 is reversed. 7
New rejection 8
Claims 58, 60-61 and 69 are rejected as being unpatentable under § 103 over 9
Yoshihara as explained herein. Joachimi and van Baal are also mentioned. 10
While Claim 58 is not anticipated by Yoshihara, on the record before the 11
PTAB we hold the subject matter of Claim 58 prima facie would have been 12
obvious within the meaning of § 103. 13
When viewed from the perspective of Yoshihara, one skilled in the art would 14
have found it obvious to use in place of C.I. Direct Blue 77 in Example 5 any of 15
the specific dyes set out in Yoshihara ¶ 0046 depending on the color of the silicone 16
film sought to be made. 17
We recognize that Yoshihara is not concerned with making a laser-weldable 18
film. Nevertheless, it would appear that an Example 5 film made from 19
C. I. Pigment Red 101 or C. I. Pigment Blue 29 reasonably could have the 20
properties claimed by applicant. 21
The PTO has no means to prepare and test such a composition. In re Best, 22
562 F.2d 1252, 1255 (CCPA 1977). Accordingly under the circumstances of this 23
case, the burden of showing that a Yoshihara Example 5 composition having 24

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C. I. Pigment Red 101 or C. I. Pigment Blue 29 would not be laser-weldable lies 1
with Applicant. In re Spada, 911 F.2d 705, 708-9 (Fed. Cir. 1990) (where claimed 2
composition and prior art composition reasonably appear to be the same, PTO may 3
require applicant to prove there is a difference); In re Best, 562 at 1254 (CCPA 4
1977) (“[w]here, as here, the claimed and prior art products are identical or 5
substantially identical, or are produced by identical or substantially identical 6
processes, the PTO can require an applicant to prove that the prior art products do 7
not necessarily or inherently possess the characteristics of his claimed product”). 8
Claim 58 does not call for a specific amount of nanoscale particles. Cf. 9
Claim 62 calling for 0.0001 to 0.1 wt %. 10
Applicant’s Specification contains the following discussion with respect to 11
amounts of nanoparticles (pages 6-7) (italics added): 12
In the plastic material, the content of laser-sensitive particles is 13
expediently 0.0001 to 0.1 weight-percent, preferably 0.001 to 0.01 14
weight-percent, in relation to the plastic material. A sufficient laser 15
weldability of the plastic matrix is typically caused in this 16
concentration range for all plastic materials coming into 17
consideration. 18
If the particle size and concentration are selected suitably in the 19
range specified, even with high-transparency matrix materials, 20
impairment of the intrinsic transparency is prevented. It is thus 21
expedient to select the lower concentration range for laser-sensitive 22
pigments having particle sizes above 100 nm, while higher 23
concentrations may also be selected for particle sizes below 100 nm. 24

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The calculated amount of nanoparticles (30 nm) described in Examples 1 1
and 5 is 0.23 wt % and 0.49 wt %, which are higher than the amount explicitly set 2
out in the Specification, i.e., 0.1 wt %. 3
However, applicant explicitly teaches that when the nanoparticles’ sizes are 4
below 100 nm (like those described in the Yoshihara examples), then “higher 5
concentrations” may be selected. Claim 58, but not Claim 62, would cover “higher 6
concentrations”. On the record before us, amounts of 0.23 wt % and 0.49 wt % fall 7
within the scope of Claim 58 and given applicant’s disclosure reasonably would be 8
expected to produce films having applicant’s claimed laser-weldable characteristic. 9
Applicant argues that Yoshihara is not concerned with laser-weldable 10
compositions. Brief, page 9. We agree. However, in determining whether the 11
subject matter of a claim would have been obvious, neither the particular 12
motivation nor the avowed purpose of the applicant controls. Rather, what matters 13
is the object reach of the claim. If the claim extends to subject matter which would 14
have been obvious, the claim is not patentable under § 103. KSR Int’l Co. v. 15
Teleflex Inc., 550 U.S. 398,519 (2007). A factual question in need of resolution is: 16
Does a Yoshihara film made using 0.23 to 0.49 wt % ITO and either C. I. Pigment 17
Red 101 or C. I. Pigment Blue 29 have applicant’s claimed laser-weldable 18
characteristic and, if so, is weldability achieved on the basis of the presence of 19
ITO? On this record the PTAB is unable to definitively answer the question. 20
Applicant questions whether the silicone described by Yoshihara is 21
transparent to laser light. Brief, 10. 22
Yoshihara states that its product is a “transparent silicone film-forming 23
composition.” ¶ 0013. See also ¶¶ 0001, 0011, 0077 (describing the product of 24

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Example 1 as “transparent”) and ¶ 0095 (describing the product of Example 5 as 1
“transparent”). 2
Yoshihara’s use of silicone to produce transparent films is consistent with 3
applicant’s disclosure stating that “silicones” are suitable plastic materials for use 4
in applicant’s invention. Specification, page 8. 5
Applicant questions whether the colorants described by Yoshihara are laser 6
transparent during welding at 800-1500 nm. Brief, page 10. 7
Based on applicant’s disclosure, we know that C. I. Pigment Red 101 or 8
C. I. Pigment Blue 29 have the required laser transparency. If it were otherwise, 9
these two pigments would not be included within the scope of Claim 58. 10
Use of the two pigments for Yoshihara’s purpose prima facie would have 11
been obvious. Accordingly, the 800-1500 nm limitation is met. 12
Applicant questions whether weldability would be due to the nanoparticles. 13
Brief, page 10. 14
The record suggests that weldability may be due to the presence of colorants. 15
See Joachimi, Claims 1 and 9. Claim 58 does not exclude weldability being due in 16
part to the dye; all that is required is that the nanoparticles contribute to 17
weldability. 18
Nevertheless, we find it more likely than not that if weldability is due to the 19
presence of nanoparticles in the case of applicant’s invention, then weldability of 20
the Yoshihara product also would be due to the presence of nanoparticles. 21
Claim 60 depends from Claim 58 and limits the amount of dye. 22
Pigment Red 101 is limited to 0.005 to 0.5 wt. %. 23
Pigment Blue 29 is limited to 0.2 to 5.0 wt. %. 24

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The claimed dye concentration appears to be consistent with typical dye 1
amounts described in the prior art. See (1) van Baal describing preferred dye 2
amounts of from 1 x 10-4 (0.0001) to 0.5 parts per hundred of resin (col. 3:44-46) 3
and Compositions F-I in Table 1 and (2) Joachimi describing amounts of from 4
0.001 to 0.1 of an IR-absorbing compound—i.e., dye (¶ 0028). 5
On the record before us, the amounts set out in Claim 60 appear to be 6
conventional dye amounts. 7
Claim 61 calls for the use of a Markush group of plastics materials, one of 8
which is “silicones”. Yoshihara describes the use of silicones (e.g., title). 9
Claims 62-63 and 66-67 call for specific nanoparticle sizes (described by 10
Yoshihara) and specific concentration of nanoparticles (not described by 11
Yoshihara). The Yoshihara amounts are greater than those set out in Claim 62. 12
Accordingly, we decline to include Claims 62-63 and 66-67 in any new ground of 13
rejection. However, nothing in this opinion should be viewed as precluding the 14
Examiner from rejecting Claims 62-63 and 66-67 based on such additional prior art 15
as the Examiner may deem appropriate. 16
Claim 69 calls for plastic material in the form of molded body, semifinished 17
product, or lacquer coating. Yoshihara describes use of its composition for 18
coating. ¶¶ 0011, 0012, 0021, 0053, 0055 and 0131-0132. 19
Rejection 2 20
Claims 58, 60-61, and 63 stand rejected under § 103(a) over van Baal. 21
Answer, page 5. 22
In the Brief, applicant does not argue the separate patentability of 23
Claims 60-61, or 63 apart from Claim 58. Accordingly, we elect to decide the 24

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appeal as to Rejection 2 on the basis of Claim 58. 37 C.F.R. § 41.37(c)(1)(vii) 1
(2011). 2
The van Baal patent describes (cols. 7-8) embodiments relevant to the 3
obviousness issue on appeal. Amounts are parts per hundred parts resin by weight, 4
including any stabilizer present in the resin. Col. 6:1-3. 5
Table 3
Composition Identifier
Component F G H I
PEI-1010
polyetherimide
ULTM® 1010
Mn =19,000
Mw = 47000

100

100

15

25
Polyester
carbonate
(PCE)
copolymer
(60% ester
groups)

84.8

74.8
TiO2 (Average
particle size
200 nm)
(col. 6:25-27)

3.03

3.09

1.46

1.52
Pigment
Black 6
0.00029 0.29 0.27
Pigment
Black 7
0.0082
Pigment
Red 178
0.0031 0.0016
Solvent
Red 135
0.0041

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Solvent
Violet 36
0.0028
Solvent
Violet 13
0.0005 0.0088
Pigment
Blue 15:4
0.031 0.023
Pigment
Brown 24
0.049 0.15 0.11 0.017
Stabilizers
(col. 6:49-54)
0.2 0.2

The Examiner and applicant disagree on the scope of Claim 58. 1
Applicant maintains that Claim 58 is limited to only the dyes recited in the 2
dye Markush group set out in the claim. 3
The Examiner held otherwise due to the “comprising” language, Claim 58. 4
The Examiner reasoned that Claim 58 includes dyes other than the dyes recited in 5
the dye Markush group because of the “comprising” transition language. In 6
support of the holding, the Examiner cites and relies on In re Crish, 393 F.3d 1253 7
(Fed. Cir. 2004). Answer, page 15. 8
Crish involved a “oligonucleotide comprising at least a portion of the 9
nucleotide sequence of SEQ ID NO:1, wherein said portion consists of the 10
nucleotide sequence from 521 to 2473 of SEQ ID NO: 1 . . .” (Italics added). The 11
prior art described an oligonucleotide, a portion of which was the same as 12
nucleotides 521 to 2473 of SEQ ID NO: 1, but included additional nucleotides. 13
The Federal Circuit rejected Crish’s proposed narrow construction of the claim on 14
appeal seeking to limit the claim to nucleotides 521 to 2473 noting the presence of 15
the transition term “comprising” and observing that the “at least a portion” 16

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language “implies that the pending claims contemplate additional nucleotides.” 1
393 F.3d at 1257. The “consists” was held to limit only the “portion”. As a result, 2
the claim on appeal could include other nucleotides and was held to be 3
unpatentable over the prior art. 4
More relevant to the facts in this appeal are (1) Berenter v. Quigg, 5
737 F. Supp. 5 (D.D.C. 1988) (step (a) of a claim calling for a process comprising 6
steps (a) through (d), where step (a) was defined by “consisting of”, did not include 7
other (a)-like steps) and (2) Mannesmann Demag Corp. v. Engineered Metal 8
Prods. Co., Inc., 793 F.2d 1279, 1282 (Fed. Cir. 1986) (element (a) of a claim 9
calling for a combination of elements comprising elements (a) through (d), where 10
element (a) was defined by “consisting of”, did not include other (a)-like 11
elements). Here, by virtue of defining the dyes by a Markush group “consisting 12
of”, applicant is limiting the dyes which can be present in its claimed plastic 13
material only to these set out in the dye Markush group. Unlike Crish where in 14
addition to the “portion” other nucleotides could be present in the overall prior art 15
sequence of nucleotides, here there is nothing which reasonably would require or 16
allow dyes beyond those of the dye Markush group to be present. 17
Claim 58 is limited to the dyes set out in the dye Markush group. 18
The Examiner found that the subject matter of Claim 58 differs from the 19
compositions described in Table 3, supra, in that van Baal does not describe a 20
specific composition having only one colorant. Answer, page 6. 21
Each of Examples F through I include a dye within the scope of Claim 58: 22
F (Solvent Violet 13); G (Solvent Red 135 and Solvent Violet 13); H (Solvent Red 23

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178) and I (Solvent Red 178). However, other dyes are also present in each of 1
Examples F through I. Claim 58 excludes the presence of those other dyes. 2
The Examiner had two reasons for finding that one skilled in the art would 3
have been taught that use of only one colorant would be technically suitable. 4
The Examiner relied on a patent law principle that one skilled in the art 5
generally recognizes that elimination of an element along with its function may be 6
appropriate and therefore may have been obvious. 7
Hence, elimination of Pigment Black 6, Pigment Black 7, Solvent Violet 36, 8
and Pigment Brown 24 would have been recognized as appropriate “if a darker 9
color were not desired.” Answer, page 6. 10
We agree with the Examiner that it would have been obvious to eliminate all 11
but one dye in making a van Baal plastic material. See Yoshihara Examples D and 12
E where only one dye is mentioned. 13
The Examiner noted that van Baal teaches the use of “mixtures” of colorants 14
(col. 3:33-34—“[c]olorants are employed in amounts and combinations sufficient 15
to render the molded article dark and opaque . . .”). The van Baal teaching was 16
found to be an implicit teaching of the use of one colorant. Answer, page 6. The 17
Examiner’s finding is consistent with van Baal’s teachings that its articles have “at 18
least one colorant” (col. 1:59 and col. 5:32). 19
According to applicant, nothing in van Baal would suggest removing some 20
colorants based on applicant’s criteria (use of laser absorption). As earlier noted, 21
in determining whether the subject matter of an application would have been 22
obvious, neither the particular motivation nor the avowed purpose of the applicant 23
controls. What matters is the objective reach of the claim. KSR, 550 U.S. at 418. 24

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When the prior art is considered in light of van Baal’s purpose, it is obvious that 1
compositions with one or more colorants are within the skill of the art and in the 2
public domain. 3
Applicant argues that van Baal does not describe laser weldability. Brief, 4
pages 11-12. 5
The Examiner found that van Baal describes compositions having 6
applicant’s elements. On that basis, the Examiner found the van Baal 7
compositions of the examples may be weldable given the presence of the claimed 8
elements and that it was applicant’s burden to establish otherwise. In re Spada, 9
911 at 709. 10
In contrast to the facts involving the Yoshihara reference, we are unable to 11
find on this record that it was reasonable to shift the burden to applicant as to the 12
van Baal reference. 13
We understand applicant to be arguing that the van Baal plastic material is 14
not laser-weldable. Accordingly, we further understand applicant to be 15
representing that it believes the van Baal plastic material is not laser-weldable and 16
has no reason for believing otherwise. As a result, we further understand applicant 17
to be arguing that it would not be reasonable to require applicant to test the van 18
Baal plastic materials for laser-weldability. 19
The nanoparticle described by van Baal is titanium dioxide (TiO2) having a 20
particle size of 200 nm. Col. 6:25-27. The amount of titanium dioxide varies from 21
1.46 to 3.03 wt%. In contrast, applicant describes the use of 0.0001 to 0.1 wt. %, 22
with allowances for higher or lower concentrations depending on particle size. 23
Specification, page 6. When the particle size is higher than 100 nm, then lower 24

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concentrations of nanoparticles are said to be appropriate. Id. But van Baal 1
describes a concentration of 1.46 wt. % which is two orders of magnitude above 2
the higher than the range explicitly described by applicant. 3
It is true that Claim 58 has no concentration limitation. However, Claim 58 4
requires that the plastic material be laser-weldable. On this record, we do not think 5
the proposed combination is sufficiently close to the claimed material for applicant 6
to have to test the van Baal embodiments for laser weldability. 7
On that basis, we believe Rejection 2 is not supported by sufficient evidence 8
to prima facie establish that the van Baal plastic materials are laser-weldable. 9
Rejection 2 is reversed. 10
Rejection 3 11
Claims 62 and 66-67 stand rejected under § 103 over van Baal and Kondo. 12
Answer, page 8. 13
Given the deficiencies of van Baal, we reverse Rejection 3 for the reasons 14
set out in reversing Rejection 2. 15
Rejection 3 is reversed. 16
Rejection 4 17
Claims 58, 60, 66-67, 74, 76-77, 80, 82 and 84 stand rejected under § 103 18
over Joachimi, Kondo and van Baal. Answer, page 9. 19
Joachimi describes transparent plastic materials which are laser-weldable. 20
Abstract. The plastic materials comprise a thermoplastic material and an 21
IR-absorbing compound (which can be a dye). 22
Joachimi differs from Claim 58 in that it does not describe the use of a 23
nanoparticle. 24

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To overcome the difference, the Examiner turns to Kondo. 1
Kondo describes laminated glass having a interlayer comprising a plastic 2
material (col. 3:57 et seq.) and ultra-fine particles having a particle size up to 0.2 3
µm (col. 2:10-12 and col. 3:11-18). 4
The Examiner reasoned that it would have been obvious to add the Kondo 5
ultrafine-sized particles to the Joachimi composition to achieve the benefits 6
described by Kondo. Answer, page 10; Kondo, col. 2:22-38. 7
Applicant argues that Joachimi and Kondo cannot be “combined.” In other 8
words, applicant argues that there is no basis for finding that one practicing the 9
Joachimi invention would be interested in the Kondo properties. Brief, page 14. 10
There are at least two rationales for combining prior art teaching. First, a 11
combination of references may be analyzed from the point of view of applicant’s 12
purpose in making an invention. Second, the analysis can be made on the basis of 13
a purpose described in the prior art. KSR, supra. See also Ex parte Talkowski, 14
Appeal 2012-002290, pages 14-18 (PTAB May 24, 2013) (informative opinion). 15
While Joachimi relates to applicant’s field of endeavor, Kondo does not. 16
Nor does Kondo relate to solving any problem within applicant’s field of endeavor. 17
Likewise, Kondo does not relate to solving any problem addressed by Joachimi 18
and vice-versa. Accordingly, Kondo is not analogous prior art under either 19
rationale for evaluating whether Kondo can be “combined” with Joachimi. 20
The Examiner found all the claimed elements in the prior art. However, on 21
the record before us, there is no apparent reason for combining those elements in 22
the manner claimed. KSR at 418 (“there must be some articulated reasoning with 23
some rational underpinning to support the legal conclusion of obviousness”). The 24

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Examiner’s reasoning appears to be based on hindsight and therefore is not based 1
on a sufficient underpinning to justify a holding of obviousness. 2
Rejection 4 is reversed. 3
Observation 4
In the application involved in Appeal 2013-000895, the Examiner relies on 5
Carroll, U.S. Patent Application Publication 2005/0137305 A1 (23 June 2005, filed 6
01 November 2004) in place of Kondo. 7
Nothing in this opinion should be construed as precluding the Examiner 8
from entering a new rejection of claims in the application on appeal based on other 9
prior art, including Carroll. 10
Rejection 5 11
Claims 74 and 76-86 stand rejected based on nonstatutory obviousness-type 12
double patenting. Answer, page 12. 13
The notice of appeal in this case is from the Final Rejection which included 14
Rejection 5. 15
However, as noted earlier in the opinion, it appears that applicant suggests 16
that the rejection is “being held in abeyance” and review of the rejection is not 17
being sought. Brief, page 8. The Examiner has not withdrawn the rejection 18
(Answer, page 4), but acknowledges that applicant is not seeking review of the 19
rejection (Answer, page 12). The rejection is not further addressed in the Reply 20
Brief. 21
No argument is presented on the merits by applicant and the Examiner has 22
not otherwise addressed Rejection 5. 23

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23

Applicant has abandoned the appeal as to Rejection 5, but has indicated that 1
it intends to pursue the claims involved in Rejection 5 after the appeal and perhaps 2
after entry of a decision on appeal in related Appeal 2013-00895. 3
We believe the proper disposition of Rejection 5 under the facts of this case 4
is to dismiss the appeal as to Rejection 5, without prejudice to such further 5
proceedings, if any, after appeal as the Examiner may deem appropriate. The facts 6
in this case differ from those in precedential opinion Ex parte Ghuman, 88 USPQ 7
1498 (BPAI 2008), in that in Ghuman applicant made it clear that it was no longer 8
seeking claims which it elected not to appeal. Here that is not so. 9
Decision 10
Upon consideration of the appeal, and for the reasons given herein, it is 11
ORDERED that Rejection 1 is reversed. 12
FURTHER ORDERED that Rejection 2 is reversed. 13
FURTHER ORDERED that Rejection 3 is reversed. 14
FURTHER ORDERED that Rejection 4 is reversed. 15
FURTHER ORDERED that the appeal is dismissed as to 16
Rejection 5. 17
FURTHER ORDERED that a new rejection is entered as to 18
Claims 58, 60-61 and 69. 37 C.F.R. § 41.50(b). 19
FURTHER ORDERED that our decision is not a final agency 20
action. 21
FURTHER ORDERED that within two (2) months from the date of 22
our decision, appellant may further prosecute the application on appeal by 23
exercising on of the two following options: 24

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Option 1: Request that prosecution be reopened by submitting 1
an amendment or evidence or both. 37 C.F.R. § 41.50(b)(1). 2
Option 2: Request rehearing on the record presently before the 3
Board. 37 C.F.R. § 41.50(b)(2). 4
FURTHER ORDERED that no time period for taking any 5
subsequent action in connection with this appeal may be extended under 37 C.F.R. 6
§ 1.136(a)(1)(iv). 7
REVERSED-IN-PART and DISMISSED-IN PART 8
(New rejection as to Claims 58, 60-61 and 69; 37 C.F.R. § 41.50(b)) 9
10
bar 11