Ex Parte Maeda et al

Patent Trial and Appeal Board

Feb 22, 2017

12596724 (P.T.A.B. Feb. 22, 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.
12/596,724 10/20/2009 Takeshi Maeda 14434.0272USWO 3978
52835 7590 02/24/2017
HAMRE, SCHUMANN, MUELLER & LARSON, P.C.
45 South Seventh Street
Suite 2700
MINNEAPOLIS, MN 55402-1683
EXAMINER
GREENE, IVAN A
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
02/24/2017 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):
PTOMail @hsml. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKESHI MAEDA, TOMOHIRO YAGYU,
and KAZUHIRO OTANI1
Appeal 2016-001650
Application 12/596,724
Technology Center 1600
Before TAWEN CHANG, RYAN H. FLAX and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims directed to glass flakes. Claims 1—7 are on appeal as rejected under
35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 We understand the Real Party in Interest to be NIPPON SHEET GLASS
COMPANY, LIMITED. Br. 1.
Appeal 2016-001650
Application 12/596,724
STATEMENT OF THE CASE
The appealed claims can be found in the Claims Appendix of the
Appeal Brief. Claims 1 and 7 are the independent claims; claim 1 is
representative and reads as follows:
1. Glass flakes each comprising:
a glass flake substrate; and
a coating layer directly coating the surface of the glass flake
substrate, wherein:
the glass flake substrate has an average thickness of 0.1 to 1.0
pm, and an average particle size of 1 to 100 pm;
the coating layer directly coated on the surface of the glass flake
substrate consists of methyl hydrogen silicone as a sole coating
agent applied to the glass flake substrate; and
a content percentage of the methyl hydrogen silicone is 0.05 to
2.50 mass% relative to the glass flakes as determined by ignition
loss at 625 ± 20°C.
Br. 12 (Claims App’x).
The following rejections are on appeal:
Claims 1—7 stand rejected under 35 U.S.C. § 103(a) over Fujiwara,2
Imai,3 Schlossman,4 Miyazaki,5 and Shin-Etsu.6 Final Action 3.
2 U.S. Patent Application Pub. No. U.S. 2005/0049133 A1 (published Mar.
3, 2005) (hereinafter “Fujiwara”).
3 U.S. Patent Application Pub. No. U.S. 2005/0238596 A1 (published Oct.
27, 2005) (hereinafter “Imai”).
4 U.S. Patent Application Pub. No. U.S. 2004/0234613 A1 (published Nov.
25, 2004) (hereinafter “Schlossman”).
5 U.S. Patent Application Pub. No. U.S. 2005/0118220 A1 (published June
2, 2005) (hereinafter “Miyazaki”).
6 Shin-Etsu, Shin-Etsu Silicone — Silicone Fluid (Product Brochure) (2004)
(hereinafter “Shin-Etsu”).
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Appeal 2016-001650
Application 12/596,724
FINDINGS OF FACT
We adopt the Examiner’s findings of fact, reasoning on scope and
content of the prior art, and conclusions set out in the Final Action and
Answer. The facts set out below highlight certain evidence.
FF1. Fujiwara taught a glass flake substrate (for a cosmetic) with
an average thickness of 0.1 to 1.0 pm and an average particle size of 1
to 100 pm, in that it disclosed:
In the present specification, a glass flake 1 refers to thin
flake-shaped particles having an average thickness t of 0.1-100
/im and an aspect ratio (average particle diameter a/average
thickness t) of 2-1000 (see FIG. 2A). Herein, average particle
diameter a is defined as the square root of the area S of the glass
flake 1 when viewed in plan (see FIG. 2B).
Fujiwara 32, 98; see also Final Action 4 (discussing Fujiwara).
FF2. Fujiwara taught a coating of only methyl hydrogen
polysiloxane over the glass flake particle as a hydrophobic treatment.
Fujiwara 199; see also Final Action 4 (discussing Fujiwara).
FF3. Miyazaki taught a cosmetic composition with a coating of
methyl hydrogen polysiloxane over a 1—100 pm spherical particle
where the methyl hydrogen polysiloxane was 2% by weight of the
particle. Miyazaki 1138; see also Final Action 5 (discussing
Miyazaki, Example 10).
FF4. Shin-Etsu disclosed methylhydrogen silicone is “[sjuitable
for processing glass, metal, fibers, and powders,” and is “[a] clear
coating with good water repellency, mold releasability, and lubricity
is obtained by baking this product onto the surface of various
materials.” Shin-Etsu 5, 9; see also Final Action 6 (discussing Shin-
Etsu).
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Appeal 2016-001650
Application 12/596,724
FF5. Shin-Etsu also disclosed methylhydrogen silicone is useful
in cosmetics such as “[s]kin cream,” “[mjilky lotion,” and “[fjace
lotion,” because of its “[pjhysiological inertness, transparency,
odorlessness, water repellency, lubricity, etc.” Shin-Etsu 9; see also
Final Action 6 (discussing Shin-Etsu).
DISCUSSION
We find the Examiner has established a prima facie case that the
claims would have been obvious over Fujiwara, Miyazaki, and Shin-Etsu.
Appellants have not produced evidence showing, or persuasively argued,
that the Examiner’s determination of obviousness is incorrect. Only those
arguments made by Appellants in the Briefs have been considered in this
Decision. Arguments not presented in the Briefs are waived. See 37 C.F.R.
§ 41.37(c)(l)(iv)(2015). We address Appellants’ arguments below.
Appellants argue that the prior art does not suggest a coating of only
methyl hydrogen silicone. App. Br. 8—10. This argument is not persuasive
in view of the disclosures of Fujiwara (FF2) and Miyazaki (FF3), each of
which teaches a particle coating of only methyl hydrogen polysiloxane, and
the disclosure of Shin-Etsu (FF4—FF5), which teaches that the alternative
material, methyl hydrogen silicone (methylhydrogen silicone), is an
advantageous coating for cosmetics.
Appellants also argue the criticality of the recited range of % mass
methyl hydrogen silicone coating for the claimed glass flake, alleging that
venturing just 0.01% lower or 0.02% higher causes significant deterioration
in properties. Br. 10—11. Appellants contend this is an “unexpected
improvement” provided by the invention and cite the Maeda Declaration
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Appeal 2016-001650
Application 12/596,724
(dated Feb. 3, 2013) as evidence. Id. However, Maeda never indicates that
the invention provides unexpected or surprising results, but merely identifies
the results achieved with the alleged critical range to be “considerably
improved” and “prominent effects.” Maeda Decl. 8.
[A] prior art reference that discloses a range encompassing
a somewhat narrower claimed range is sufficient to establish a
prima facie case of obviousness. That is not to say that the
claimed composition having a narrower range is unpatentable.
Rather, the existence of overlapping or encompassing ranges
shifts the burden to the applicant to show that his invention
would not have been obvious.
In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
The Examiner contests the significance of Appellants’ data
concerning the recited range because it is not apparent how Appellants
calculated their alleged 25% improvement in feeling and transparency
properties and no statistical analysis of the results was provided; the
Examiner suggests any differences between the invention and the prior art
are not in kind, but only in degree. Ans. 10—11. The Examiner invited
Appellants to explain their results in a reply brief, but none was filed. Id.
To show criticality of a claimed range, “it is not inventive to discover
the optimum or workable ranges by routine experimentation.” In re Aller,
220 F.2d 454, 456 (CCPA 1955). Only if the “results of optimizing a
variable” are “unexpectedly good” can a patent be obtained for the claimed
critical range. In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997) (citing In
re Antonie, 559 F.2d 618, 620 (CCPA 1977)). “Furthermore, it is well
settled that unexpected results must be established by factual evidence.
‘Mere argument or conclusory statements in the specification does not
suffice.’” Id. (citing In re De Blauwe, 736 F.2d 699, 705 (Fed.Cir.1994)).
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Appeal 2016-001650
Application 12/596,724
Here, Appellants have not provided evidence that the data shown in
the Specification or in Maeda Declaration establishes the results improved
by the recited range were unexpected and not due to mere routine
optimization. All Appellants present on this issue is attorney argument,
which will not suffice to rebut the prima facie case of obviousness.
SUMMARY
The rejection of claims 1—7 under 35 U.S.C. § 103(a) is affirmed.
TIME PERIOD FOR RESPONSE
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
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