12594667 (P.T.A.B. Dec. 20, 2016)

Ex Parte Kaupp et al

Patent Trial and Appeal BoardDec 20, 2016

12594667 (P.T.A.B. Dec. 20, 2016)

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. 12/594,667 10/05/2009 Günter Kaupp P/746-53 (V 13436) 5919 2352 7590 12/20/2016 OSTROLENK FABER LLP 1180 AVENUE OF THE AMERICAS NEW YORK, NY 10036-8403 EXAMINER PARVINI, PEGAH ART UNIT PAPER NUMBER 1731 MAIL DATE DELIVERY MODE 12/20/2016 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 GÜNTER KAUPP, ULRICH SCHMIDT, DIRK SCHUMACHER, and KATRIN STEINBACH ____________ Appeal 2015-001420 Application 12/594,667 Technology Center 1700 ____________ Before PETER F. KRATZ, MARK NAGUMO, and JAMES C. HOUSEL, Administrative Patent Judges. KRATZ, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner’s second or subsequent rejection of claims 1–19, 28–33, and 36. Oral argument was presented at a Hearing conducted on December 12, 2016. We have jurisdiction pursuant to 35 U.S.C. § 6. Appellants’ claimed invention is directed to an effect pigment including a glass flake substrate and a coating including at least one layer of at least one high refractive material. According to Appellants, the effect pigments have a variety of uses including “colouring of plastics, glasses, ceramic products, agricultural foils, decorative cosmetic formulations” and Appeal 2015-001420 Application 12/594,667 2 the pigments may find further uses as “automotive coatings, and inks, including printing inks” (Spec. 20, ll. 4-7). The glass flake substrate of the effect pigments is a glass made of a specified composition and is additionally limited to a glass composition having a particular softening point range. Claim 1, the sole independent claim on appeal, is illustrative and reproduced below: 1. An effect pigment comprising as a substrate a glass flake with a coating, said coating comprising at least one layer of at least one high refractive material, said material having at least one of a refractive index of at least 1.8, and at least one layer of at least one semitransparent metallic material, wherein said glass flake comprising the following composition; 65 75 wt. -% silicon oxide; 2 9 wt. -% aluminium oxide; 0.0 – 5 wt. -% calcium oxide; 5 12 wt. -% sodium oxide; 8 15 wt. -% boron oxide; 0.1 5 wt. -% titanium oxide; and 0.0 5 wt. -% zirconium oxide, based on the weight of said glass flakes, said glass composition having a softening point in a range of from 620° to 750° C and wherein said glass flake substrate has an average thickness in the range of 0.05 to 10 µm and an average particle size in a range of from 1 to 1000 µm. The Examiner relies on the following prior art references as evidence in rejecting the appealed claims: Remig US 4,069,186 Jan. 17, 1978 Brix US 5,459,100 Oct. 17, 1995 Huang US 2003/0129311 A1 Jul. 10, 2003 Schmidt US 6,596,070 B1 Jul. 22, 2003 Appeal 2015-001420 Application 12/594,667 3 Zimmermann US 2004/0139889 A1 Jul. 22, 2004 Kieser1 WO 2003/042610 A1 Apr. 27, 2006 Kaupp2 WO 2006/136435 A2 Dec. 26, 2006 The Examiner maintains the following grounds of rejection: Claims 1–14, 16–19, 28–30, 32, 33, and 36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kaupp, Brix, Kieser, Ramig, and Schmidt. Claim 15 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Kaupp, Brix, Kieser, Ramig, Schmidt, and Zimmerman. Claim 31 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kaupp, Brix, Kieser, Ramig, Schmidt, and Huang. We reverse the stated rejections. Our reasoning follows. Concerning the first stated rejection, the Examiner finds that Kaupp does not teach the glass flake composition of claim 1 and the Examiner relies on Brix for a teaching of a glass composition that, the Examiner finds, overlaps with the composition for the glass specified in claim 1 but for the lack of an explicit description in Brix of a softening temperature for the glass that corresponds with the range for a glass softening temperature as set forth in claim 1 (Non-final Office Act. 3–4). However, the Examiner finds that the softening point range for the glass of Brix would be expected to correspond to the claimed softening point range because “such characteristic is expected to follow from the glass composition of Brix motivated by the fact that similar compositions cannot 1 Our references to Kieser are to the U.S. Patent Publication (US 2007/0289496 A1), which is employed by the Examiner as a translation. 2 Our references to Kaupp are to the U.S. Patent Publication (US 2010/0095868 A1), which is employed by the Examiner as a translation. Appeal 2015-001420 Application 12/594,667 4 have mutually exclusive characteristics, and Brix teaches a glass composition which has overlapping ranges of the amounts of all the claimed oxides with what are instantly claimed” (Non-Final Act. 4). Based on the aforementioned findings and others as set forth by the Examiner in the Non- Final Office Action, the Examiner holds that it would have been well–within the ordinary skill in the art for an ordinarily skilled artisan to modify Knapp by using the glass composition of Brix for the substrate motivated by the teachings of Kaiser with respect to employing borosilicate glass, such as that of Brix, as the glass composition for the pigment substrate of Kaupp (Non- final Act. 3–5).3 Contrary to the Examiner’s finding that the glass composition teachings of Brix inferentially suggest using a glass having a softening point satisfying Appellants’ claim 1 softening point limitation, Brix discloses that nearly all of the glasses made in accordance with the glass composition of Brix include glass compositions having a softening point (Ew) significantly above the claimed softening point range of 620 –750 C, and none are within the required range. See the results reported in Table 2 for the Examples of Brix (cols. 3–7). Consequently, the weight of the evidence relied upon by the Examiner appears to support Appellants’ countervailing argument and undercuts the Examiner’s contention, on which the obviousness rejection is premised, that is, that the corresponding glass compositions of Brix “cannot have mutually exclusive characteristics” (Non-final Act. 4; App. Br. 6). The Examiner has not established that Brix or any of the other applied references, taken alone 3 The Examiner relies on the other applied references for other features of claim 1. Appeal 2015-001420 Application 12/594,667 5 or in combination, would have otherwise suggested selecting a glass composition corresponding to all of the requirements of claim 1. Consequently, the Examiner’s efforts fall short of carrying the burden to establish a prima facie case of obvious for claim 1 and/or any of the other claims rejected in the Examiner’s first stated rejection.4 Nor does the Examiner articulate how the additional references applied in the separate rejections of certain dependent claims would have cured the deficiencies in the base rejection. It follows that we shall reverse all of the Examiner’s obviousness rejections. CONCLUSION The Examiner’s decision to reject the appealed claims is reversed. REVERSED 4 In light of our determination respecting the lack of a prima facie case based on the glass composition limitations, including the softening point limitation, of claim 1, we need not address the additional arguments pertaining to other claim features and/or the Declaration evidence.