Ex Parte Maul et al

Patent Trial and Appeal Board

Jan 31, 2014

11628431 (P.T.A.B. Jan. 31, 2014)

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.
11/628,431 02/13/2007 Robert Maul P/746-12 5104
2352 7590 02/03/2014
OSTROLENK FABER LLP
1180 AVENUE OF THE AMERICAS
NEW YORK, NY 10036-8403
EXAMINER
MEKHLIN, ELI S
ART UNIT PAPER NUMBER
1758
MAIL DATE DELIVERY MODE
02/03/2014 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 ROBERT MAUL and STEFAN TRUMMER
______________

Appeal 2013-001228
Application 11/628,431
Technology Center 1700
_______________

Before CHUNG K. PAK, CHARLES F. WARREN and
DONNA M. PRAISS, Administrative Patent Judges.

WARREN, Administrative Patent Judge.
DECISION ON APPEAL
Applicants appeal to the Board under 35 U.S.C. § 134(a) from the
decision of the Primary Examiner finally rejecting claims 1, 2, 8, 10-21 and
33-35 under 35 U.S.C. § 103(a): claims 1, 2, 10-20, 33 and 35 over Bosch
(US 6,409,814 B1), Levine (US 4,321, 087) and van Ooij (US 5,322,713);
claim 8 over Bosch, Levine, van Ooij and Iler (US 2,885,366); claim 21 over
Bosch, Levine, van Ooij and Uemae (US 5,424,355); and claim 34 over
Bosch, Levine, van Ooij and Nikaido (US3,945,899).1 App. Br. 4; Ans. 3, 7,
8, 9. We have jurisdiction. 35 U.S.C. § 6(b).
An oral hearing was held January 16, 2014.
We reverse the decision of the Primary Examiner.

1 The Examiner has withdrawn the grounds of rejection of claims 1, 2, 8,
10-21 and 33-35 under 35 U.S.C. § 103(a) over the basic combination of
Bosch, Duguet (US 2006/0000389 A1), and van Ooij. Ans. 10; App. Br. 4.
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Application 11/628,431
2
Claim 1 illustrates Appellants’ invention of an aqueous coating
composition, and is representative of the claims on appeal:
1. An aqueous coating composition, comprising at least one water-
compatible film-forming agent and aluminum pigments that are provided
with at least one inorganic anti-corrosion layer,
the aluminum pigments, which are rolled out by mechanical shaping,
have a lamellar structure and the thickness of said aluminum pigments, plus
that of the at least one inorganic anti-corrosion layer, averages less than 160
nm;
said anti-corrosion layer consists of silicon dioxide, wherein a silicon
dioxide surface of said layer is coated with silanes; and
an aspect ratio, which is calculated from the ratio of an average
longitudinal extent to an average thickness of said aluminum pigments
provided with the at least one inorganic anti-corrosion layer is more than
200.
App. Br. 25 (Claims App’x).
OPINION
We agree with Appellants’ principal position that the Examiner erred
in concluding that the combination of Bosch, Levine and van Ooij, common
to all grounds of rejections, would have led one of ordinary skill in the art to
modify Bosch’s aqueous coating compositions, which can contain aluminum
pigments coated with a layer of a silicon-oxygen-matrix, by using Levine’s
finally divided thin, aluminum flake pigments prepared by depositing a thin
aluminum film on a carrier sheet by PVD and removing the flakes from the
sheet, thus arriving at an aqueous coating compositions comprising, among
other things, “aluminum pigments, which are rolled out by mechanical
shaping,” that fall within representative claim 1. Ans. 3-4, 11-16; App. Br.
6-11; Reply Br. 4-9.
The Examiner interprets the claim language “aluminum pigments,
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Application 11/628,431
3
which are rolled out by mechanical shaping” as a product-by-process
limitation which specifies a mechanical shaping process that uses “rollers”
to “roll out” the aluminum pigments, even though the Examiner finds in the
Specification the disclosure of the “ball milling” mechanical shaping
process, and thus determines that the product-by-process claim language
encompasses Levine’s PVD aluminum flake pigments because the claim
language is directed to the “product and not the manner in which it is
produced.” Ans. 3-4, 11-12, 14-15. On this basis, the Examiner finds the
evidence in the Specification and in the Declarations under 37 C.F.R.
§ 1.132 adduced by Appellants which are based on aluminum pigments
formed by the disclosed “rolled out” mechanical shaping process to be
inapplicable to the issue of using Levine’s PVD aluminum flake pigments as
the aluminum pigments in Bosch in order to arrive at the claimed invention.
Ans. 12, 14-16; App. Br. 6-7, 8-11; Reply Br. 4-5.
In order to compare the claimed invention with the prior art, the
Examiner must, as an initial matter, give the claim terms the broadest
reasonable interpretation consistent with the Specification as it would be
interpreted by one of ordinary skill in the art. See, e.g., In re Suitco Surface,
Inc., 603 F.3d 1255, 1259-60 (Fed. Cir. 2010) (“claim language should be
read in light of the specification as it would be interpreted by one of ordinary
skill in the art”); In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) (“Since
it would be unreasonable for the PTO to ignore any interpretive guidance
afforded by the applicant's written description, . . . as an initial matter, the
PTO applies to the verbiage of the proposed claims the broadest reasonable
meaning of the words in their ordinary usage as they would be understood
by one of ordinary skill in the art, taking into account whatever
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Application 11/628,431
4
enlightenment by way of definitions or otherwise that may be afforded by
the written description contained in the applicant's specification.”).
We find that the Specification describes the “rolled out” process as
rolling out the aluminum flake by grinding aluminum particles with grinding
elements to produce pigment with uniform shape that have smooth edges
and a narrow distribution of thickness. No “rollers” for this purpose are
disclosed. Spec. 17:12 to 19:32. Product-by-process claim 1 characterizes
the aluminum pigment product by specifying this process, and thus the
Examiner has the burden of establishing that the aluminum pigment product
produced by this process is identical or substantially identical to prior art
aluminum pigments which can be made by any process, to establish a prima
facie case of obviousness. See, e.g., In re Spada, 911 F.2d 705, 7708 (Fed.
Cir. 1990) (“The Board held that the compositions claimed by Spada ‘appear
to be identical’ to those described by Smith. While Spada criticizes the usage
of the word ‘appear’, we think that it was reasonable for the PTO to infer
that the polymerization by both Smith and Spada of identical monomers,
employing the same or similar polymerization techniques, would produce
polymers having the identical composition.”); In re Thorpe, 777 F.2d 695,
697 (Fed. Cir. 1985) (“If the product in a product-by-process claim is the
same as or obvious from a product of the prior art, the claim is unpatentable
even though the prior art product was made by a different process.”); In re
Best, 562 F.2d 1252, 1254-56 (CCPA 1977). On this record, the Examiner
has not carried the burden.
We are of the opinion that, as Appellants argue, the Examiner erred in
interpreting the subject claim limitation without considering the disclosure in
the Specification, and thus erred in comparing the claimed invention with
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5
the prior art and in evaluating Appellants’ arguments and evidence.
Accordingly, in the absence of a prima facie case of obviousness we
reverse the grounds of rejection of 1, 2, 8, 10-21 and 33-35 under 35 U.S.C.
§ 103(a).
The Primary Examiner’s decision is reversed.
REVERSED