Ex Parte Henry

Patent Trial and Appeal Board

May 26, 2017

13731565 (P.T.A.B. May. 26, 2017)

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.
13/731,565 12/31/2012 Michael J. Henry 10007485A1 6610
24959 7590 05/26/2017
PPG Industries, Inc.
IP Law Group
One PPG Place
39th Floor
Pittsburgh, PA 15272
EXAMINER
TSCHEN, FRANCISCO W
ART UNIT PAPER NUMBER
1712
MAIL DATE DELIVERY MODE
05/26/2017 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 MICHAEL J. HENRY
____________

Appeal 2016-001443
Application 13/731,565
Technology Center 1700
____________
Before RAE LYNN P. GUEST, GEORGE C. BEST, and
DONNA M. PRAISS, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1–14, 22, and 23 of Application
13/731,565 under 35 U.S.C. § 103(a) as obvious. Final Act. (July 10, 2014).
Appellant1 seeks reversal of these rejections pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we affirm.

1 PPG Industries Ohio, Inc. is identified as the real party in interest. Appeal
Br. 1.
Appeal 2016-001443
Application 13/731,565
2
BACKGROUND
The ’565 Application describes methods for verifying visual
characteristics of multi-layer automotive paint coatings in the automotive
refinish and restoration industry. Spec. ¶ 1. According to Appellant, the
repair of multi-layer or multi-staged colors is a difficult and time-consuming
process for automotive collision repair paint shops. Id. ¶ 2. These paint
shops conventionally use reference chips to simulate the total combined
finish effect of multi-layer paint formulations. Id. ¶ 3. The single chip
showing the combined effect of the multiple layers does not provide
adequate guidance for judging the correctness of the match as each layer of
the multi-layer finish is applied. Id. Thus, “conventional multi-layer color
reference chips are not sufficient for colors that are difficult to repair.” Id.
Claim 1 is representative of the ’565 Application’s claims and is
reproduced below from the Corrected Claims Appendix filed May 29, 2015:
1. A method of verifying visual characteristics of a multi-
layer automotive coating as it is applied to an automotive
component comprising:
applying a colored basecoat composition onto the
automotive component;
comparing the applied colored basecoat with an exposed
portion of a reference colored basecoat of a precoated color chip
to provide a first color match verification, wherein the precoated
color chip comprises the reference colored basecoat on a
substrate and at least one reference effect appearance midcoat
partially covering the reference colored basecoat;
applying at least one effect appearance midcoat
composition onto the automotive component over the applied
colored basecoat; and
comparing the at least one applied effect appearance
midcoat with the at least one reference effect appearance midcoat
of the precoated color chip to provide a second color match
Appeal 2016-001443
Application 13/731,565
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verification, wherein the application of the colored basecoat
composition and the application of the at least one effect
appearance midcoat composition are performed at a separate site
from production of the precoated color chip.
Corrected Claims App.
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 2, 7, 11–14, 22, and 23 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of AutoPaint-
Touchup.com2 (“APT”) and Sousa,3 as evidenced by Johnson.4
Final Act. 2–3.
2. Claims 3 and 4 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of APT, Sousa, and Jaffe,5 as
evidenced by Johnson. Final Act. 6.
3. Claims 5 and 9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of APT, Sousa, and Buter,6 as
evidenced by Johnson. Final Act. 8.

2 Car painting touch up | Tri-coat paint repairs / touch ups. AutoPaint-
Touchup.com, (archived June 30, 2010; accessed August 30, 2013)
http://bit.ly/2qoDZNX.
3 US 1,962,414, issued June 12, 1934.
4 US 7,404,987 B2, issued July 29, 2008. Nirupama Karunaratne is the first-
named inventor of the ’987 patent. To avoid confusion, however, we shall
follow the Examiner and continue to refer to this reference as “Johnson,”
after the second-named inventor.
5 US 5,871,827, issued February 16, 1999.
6 US 2002/0193512 A1, published December 19, 2002.
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Application 13/731,565
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4. Claims 6 and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of APT, Sousa, Buter, and
Dutt,7 as evidenced by Johnson. Final Act. 9.
5. Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of APT, Sousa, and Henkelmann,8 as evidenced
by Johnson. Final Act. 10.
DISCUSSION
Appellant argues for reversal of the rejection of claims 1–14, 22, and
23 on the basis of limitations found in independent claims 1 and 22. See
Appeal Br. 4–7. We address each of the independent claims separately
below. The dependent claims will stand or fall with the independent claim
from which they depend. 37 C.F.R. § 41.37(c)(1)(iv) (2013).
Claim 1. The Examiner rejected claim 1 as unpatentable over the
combination of APT and Sousa. Final Act. 3–4.
Appellant argues that this rejection should be reversed because
(1) APT does not disclose comparison of an applied colored basecoat with
an exposed portion of a reference colored basecoat of a precoated color chip,
(2) Sousa and APT are non-analogous art, (3) Sousa “does not disclose a
paint chip having a reference basecoat that is partially exposed on one
portion and covered by at least one midcoat on another portion,” and
(4) APT does not describe or suggest application of the colored basecoat
composition and application of effect appearance midcoat composition at a

7 US 2010/0272986 A1, published October 28, 2010.
8 US 2003/0023114 A1, published January 30, 2003.
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Application 13/731,565
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separate site from that where the precoated color chip is produced. Appeal
Br. 4–7.
For the reasons set forth below, we do not find these arguments
persuasive.
First, Appellant argues that APT does not describe comparison of an
applied colored basecoat with an exposed portion of a reference colored
basecoat of a precoated color chip. Appeal Br. 5.
We are not persuaded by this argument. In an obviousness
determination, the question is whether or not the differences between the
claimed invention, taken as a whole, and the prior art would have been
obvious to a person of ordinary skill in the art at the time of the invention.
35 U.S.C. § 103(a) The Examiner is not relying on any particular teaching
in APT but, rather, concludes that comparison of the described letdown chip
with the basecoat and midcoat that is being applied to the vehicle in APT
would have been obvious to the skilled artisan without such an express
teaching because “[t]he purpose of the let-down panel is to help the
refinishing technician by giving the technician a standard to achieve the
same color and finish on the automobile substrate so that the refinishing is
undetectable.” Answer 2. As the Examiner correctly concludes, see Answer
2–3, it would have been obvious to the skilled artisan to compare the color
of the applied basecoat on the automotive component with the color of the
applied basecoat on the letdown panel to verify that a suitable color match
had been achieved before proceeding to the next step, i.e., application of the
midcoat.
Second, Appellant argues that Sousa and APT are non-analogous art.
Appeal Br. 6.
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To rely upon a reference as a basis for an obviousness rejection of
Appellant’s claims, the reference must either (1) be in the field of the
inventor’s endeavor or (2) be reasonably pertinent to the particular problem
with which the inventor was concerned. In re Kahn, 441 F.3d 977, 986‒87
(Fed. Cir. 2006); In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992).
In this case, the Examiner correctly determined that Sousa was
reasonably pertinent to the particular problem with which the inventor was
concerned. As the Examiner explained, “both APT and Sousa are concerned
with the issue/problem of comparing a paint chip to a substrate.” Answer 4.
In particular, Sousa is concerned with a device and method for making a
precoated color card that will accurately match the appearance of paint when
it is later applied to a substrate. Sousa p. 1, ll. 46–60.
In view of the foregoing, we agree with the Examiner that Sousa is
reasonably pertinent to a problem which the inventor faced and, therefore, is
analogous art.
Third, Appellant argues that Sousa does not disclose a paint chip
having a reference basecoat that is partially exposed on one portion and
covered by at least one midcoat on another portion. Appeal Br. 6.
We are not persuaded by this argument because the combined
teachings of APT and Sousa describe or suggest the claim limitation at issue.
See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (“The test for
combining references is not what the individual references themselves
suggest but rather what the combination of disclosures taken as a whole
would suggest to one of ordinary skill in the art.”). Here, APT is being
relied upon for the limitation that Appellant argues is missing from Sousa.
APT describes the creation of a letdown panel which is covered with a
colored basecoat. Portions of the letdown panel are then covered with
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Application 13/731,565
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varying numbers of coats of midcoat composition to provide references that
allow for an accurate final color match. Sousa is being relied upon for the
limited purpose of showing that it was known in the art at the time of the
invention to produce cards displaying final paint colors at a location and
using equipment that is different from where the paint will ultimately be
applied. Specifically, Sousa describes the creation of precoated color cards
that accurately match paint being sold by a manufacturer. Because a person
having ordinary skill in the art is also a person of ordinary creativity, the
combination of these descriptions renders obvious the off-site use of a
precoated color card having the basecoat and midcoat layers exposed to
show how the different layers affect the final color to obtain a desirable
color match, as with the letdown panel described in APT.
Fourth, Appellant argues that APT does not describe or suggest
application of the colored basecoat and midcoat compositions at a location
that is different from that were the precoated color chip is produced. Appeal
Br. 6. Indeed, APT is silent as to the precise location where the let down
panel is made vis-à-vis the vehicle to be painted.
However, we are not persuaded by this argument because the
Examiner’s rejection is over the combined teachings of APT and Sousa. As
the Examiner explains, Sousa describes making precoated color chips that
paint manufacturers can later sell to retailers of the paint to show the
purchaser of the paint what the final paint color will be. Final Act. 4.
Accordingly, the skilled artisan would have understood that the precoated
color chip of Sousa is not produced at the same location as the item that will
later be painted by the paint. A person having ordinary skill in the art,
therefore, would have found it obvious to similarly produce a letdown panel
as taught by APT at a separate site from where the later painting of the
Appeal 2016-001443
Application 13/731,565
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automotive component is performed. See Answer 5 (relying upon Sousa
p. 1, ll. 46–60).
For these reasons, we affirm the Examiner’s rejection of claims 1–14
of the ’565 Application.
Claim 22. The Examiner rejected claim 22 as unpatentable over the
combination of APT and Sousa. Final Act. 3–4, 6.
Appellant argues that this rejection should be reversed because
(1) APT discloses comparison of an applied colored basecoat with an
exposed portion of a reference colored basecoat of a precoated color chip,
(2) Sousa and APT are non-analogous art, (3) Sousa “does not disclose a
paint chip having a reference basecoat that is partially exposed on one
portion and covered by at least one mid-coat on another portion,” and
(4) APT does not describe or suggest application of the colored basecoat
composition and the reference effect appearance midcoat composition to the
automotive component using different equipment from that used to produce
the precoated color chip. Appeal Br. 4–7.
We have already explained why we are not persuaded by arguments
(1)–(3) in our discussion of claim 1. These arguments are equally
unpersuasive in connection with claim 22.
We are not persuaded by argument (4) because Sousa describes
creation of a precoated color chip using automated equipment that is
different than the equipment that would be used to apply the later purchased
paint. Thus, it would have been obvious to the skilled artisan that a letdown
panel, such as that described in APT, could be made using an automatic
process using equipment, such as that described in Sousa, and be provided at
a later time when a vehicle is being painted and a precise color match is
needed. We, therefore, find no reversible error in the Examiner’s
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Application 13/731,565
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determination that the combination of APT and Sousa suggests the limitation
at issue.
For these reasons, we affirm the Examiner’s rejection of claims 22
and 23 of the ’565 Application.
CONCLUSION
For the reasons set forth above, we affirm the rejection of claims 1–
14, 22, and 23 of the ’565 Application.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED