Ex Parte Mennig et al

Patent Trial and Appeal Board

Oct 6, 2017

12519102 (P.T.A.B. Oct. 6, 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.
12/519,102 08/21/2009 Martin Mennig 3672-P36671 1179
13897 7590
Abel Law Group, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
10/19/2017 EXAMINER
EMPIE, NATHAN H
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
10/19/2017 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):
mail @ Abel-IP.com
hmuensterer @ abel-ip. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN MENNIG and HELMUT SCHMIDT1
Appeal 2017-002907
Application 12/519,102
Technology Center 1700
Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and N.
WHITNEY WILSON, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal from the Examiner’s decision rejecting claims 52—
71. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
1 EPG (Engineered Nanoproducts Germany) AG is identified as the real
party in interest. App. Br. 3.
Appeal 2017-002907
Application 12/519,102
Appellants claim a process for providing a substrate with a vitreous
layer comprising an interference pigment, wherein the process comprises
comminuting an interference pigment by a wet grinding process in a
dispersion medium (independent claim 52) such as via a high-speed rotary
ball mill with rotor and stator (dependent claim 54) for 1 to 6 hours
(remaining independent claim 70).
A copy of representative claim 52, taken from the Claims Appendix of
the Appeal Brief, appears below.
52. A process for providing a substrate having a metal, glass or
ceramic surface with a vitreous layer comprising an interference pigment,
wherein the process comprises:
(a) comminuting an interference pigment having at least one dielectric
interference layer by a wet grinding process in a dispersion medium;
(b) dispersing the comminuted interference pigment into a silicate-
containing suspension to obtain a coating composition;
(c) applying the coating composition to the metal, glass or ceramic
surface by spraying; and
(d) densifying the applied coating composition at a temperature of
not more than 650°C to form the vitreous layer.
The $ 112, 2nd paragraph. Rejection
The Examiner rejects claim 54 under 35 U.S.C. § 112, 2nd paragraph,
as being indefinite based on the proposition that the term “high-speed” in the
claim phrase “high-speed rotary ball mill” is a relative term whose scope
2
Appeal 2017-002907
Application 12/519,102
cannot be reasonably ascertained because the Specification does not provide
a standard or definition for the term (Final Action 2).2
Appellants provide argument and evidence that the claim term was
known and used in the prior art without quantification (App. Br. 7—9). This
argument and evidence establishes that one having ordinary skill in the art
would be reasonably apprised of the scope encompassed by the claim 54
phrase “high-speed rotary ball mill.” We do not sustain, therefore, the
Examiner’s § 112, 2nd paragraph, rejection.
The $ 103 Rejections
Under 35 U.S.C. § 103(a), the Examiner rejects as unpatentable:
claims 52, 53, 56, 57, and 59-69 as unpatentable over Endres (WO
2005/066388 A2, published July 21, 2005, as translated) in view of Roemer-
Scheuermann (US 2005/0129959 Al, published June 16, 2005) (hereinafter
“Roemer”), Leigeber (US 2002/0086113 Al, published July 4, 2002) and
Reed (.Principles of Ceramics Processing, John Wiley & Sons, Inc., Second
Edition, Chapter 17, 313—332 (1995)) as evidenced by Heidelberg
(www.print-media-
academy. com/ www/html/en/content/ articles/education/in-
_the_know/print_buyer_services/passion_for_print_lips); and
claims 54, 55, 58, 70, and 71 as unpatentable over these references in
combination with Stone (US 4,482,097, issued Nov. 13, 1984).
2 We observe that the Examiner has not likewise rejected claim 70 despite
the fact that this claim also contains the term and phrase in question.
3
Appeal 2017-002907
Application 12/519,102
We sustain these rejections for the reasons given by the Examiner and
below.
Concerning independent claim 52, the Examiner concludes that it
would have been obvious to provide the process of Endres with an
interference pigment such as Iriodine® in view of Roemer as evidenced by
Heidelberg (Final Action 4), and Appellants do not contend otherwise. The
Examiner also concludes that it would have been obvious to comminute the
interference pigment with a wet grinding process in view of Leigeber and
Reed (id. at 5).3
Appellants contest this latter obviousness conclusion with the
fundamental position that a wet grinding process would not have been
expected to successfully comminute an interference pigment (Reply Br. 5).
In support of this position, Appellants point out that Leigeber’s
disclosure of a ball mill for size reduction of laminated pigments (Leigeber
145) is not specific to the interference pigments discussed in the
Background Art section of the reference (Leigeber || 5—6) (App. Br. 11—12)
and that Reed’s disclosure of wet ball milling for size reduction of particles
(Reed 322) relates to ceramics rather than interference pigments (App. Br.
18).
3 In a prior decision for appeal number 2013-005654 in the subject
application, we agreed with a corresponding obviousness conclusion by the
Examiner (Dec. 3—4).
4
Appeal 2017-002907
Application 12/519,102
However, the Examiner’s obviousness conclusion is not shown to be
erroneous simply because the references fail to expressly teach comminuting
an interference pigment by a wet grinding process. This is because the test
for obviousness is whether the combination of Leigeber and Reed as a whole
would have suggested the claimed invention. See In re Merck & Co., Inc.,
800 F.2d 1091, 1097—98 (Fed. Cir. 1986). As indicated above, Feigeber
teaches that ball milling generically was known in the prior art for size
reduction of pigments (Feigeber 145), and Reed teaches that wet ball
milling specifically was known in the prior art for size reduction of particles
(Reed 322). These combined teachings as a whole would have suggested
reducing the size of interference pigments via the prior art technique of wet
ball milling in accordance with its established function.4 See KSR Int 7 Co.
v. Teleflex Inc., 550 U.S. 398, 417 (2007) (In assessing the obviousness of
claims to a combination of prior art elements, the question to be asked is
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.”).
In further support of their position, Appellants argue that Feigeber’s
examples show “multilayer structures are delaminated by milling” (App. Br.
12) and that “FEIGEBER thus provides a disincentive rather than an
4 In the record before us, Appellants do not dispute with any reasonable
specificity the Examiner’s determination that an artisan would have been
motivated to provide Endres with an interference pigment having a reduced
size of less than 5 microns (Final Action 5).
5
Appeal 2017-002907
Application 12/519,102
apparent reason for one of ordinary skill in the art to grind a multilayer
structure such as an interference pigment” (id. at 13).
Appellants’ argument lacks convincing merit. As correctly pointed
out by the Examiner, Leigeber explicitly discloses producing ground or
milled structures having multiple laminae bonded firmly together (Ans. 4
(citing, for example, Leigeber 146)).
Appellants also contend their position is supported by quoted
excerpts from previously submitted documents which excerpts are said to
warn against milling of interference pigments (App. Br. 13—17, 21—24).
As correctly indicated by the Examiner, these excerpts are conditional
in that they merely suggest pigment damage may occur if milling or mixing
parameters are excessive. For example, in the document filed 7 June 2012
(App. Br. 13), the excerpt merely states “[i]f the mechanical stress to the
pigments is too high, the pigment particles might break” (emphasis added)
(id. at 14). Similarly, in the document filed 1 July 2015 (id. at 15), the
excerpt merely states that “strong” shear forces must be avoided due to the
breakability of interference pigments (id. at 16). We agree with the
Examiner that such statements reinforce the obviousness conclusion (1)
because they “demonstrate [] that one of ordinary skill in the art would
appreciate that the intensity of a milling operation is result effective and
could be optimized to obtain a desired outcome, such as size, but not damage
by minimizing the mechanical stress during comminution” (Ans. 7) and
(2) because Reed teaches that wet rotary ball milling provides reduced
impact stress resulting in reduced particle damage (id. (see Reed 322:
6
Appeal 2017-002907
Application 12/519,102
“These effects [i.e., defects in particles including a reduction in the coercive
force of hard ferrite particles] are usually less pronounced in wet ball
milling, where the impact stresses are lower.”)).
In rejecting independent claim 70, the Examiner additionally
concludes that it would have been obvious to practice the wet ball milling of
the modified Endres process via a high-speed rotary ball mill with rotor and
stator as claimed in view of Stone (Final Action 10) and that it would have
been an obvious optimization to perform the milling for a period of 1 to 6
hours as claimed {id. at 10—11).
Appellants argue that the rotor and stator of Stone are part of the
electrical motor/drive system rather than part of the milling chamber (App.
Br. 23).
In response, the Examiner determines that the limitation “a high-speed
rotary ball mill with rotor and stator” (claims 54, 70) does not require the
rotor and stator to be part of the milling chamber and is satisfied by the rotor
and stator of Stone’s motor/drive system (Ans. 13). We emphasize that the
Appellants do not challenge that determination in their Reply Brief.5 Under
these circumstances, Appellants’ argument is unpersuasive.
5 We also emphasize that Appellants appear to concede that the attrition mill
discussed at page 317 of Reed is indistinguishable from their claimed high­
speed rotary ball mill with rotor and stator (App. Br. 23).
7
Appeal 2017-002907
Application 12/519,102
Appellants contest the Examiner’s obvious-optimization conclusion
by again relying on an excerpt from the previously mentioned document
filed 1 July 2015 (App. Br. 21-22, 24).
For reasons analogous to those given earlier, this excerpt does not
explicitly disclose parameters (e.g., those recited in claim 70) which cause
pigment damage but instead merely suggests that pigment damage may
occur if milling or mixing parameters are excessive. As explained above
and by the Examiner (Ans. 7), the excerpt evinces that an artisan would
recognize the intensity of a milling operation to be result effective and
capable of optimization so as to achieve the desired size reduction while
minimizing pigment damage. In this respect, Appellants’ excerpt supports
the Examiner’s conclusion that it would have been obvious to optimize the
milling duration and thereby achieve the 1 to 6 hour duration of claim 70.
In summary, the arguments and evidence presented in this appeal, on
balance, weigh in favor of an ultimate conclusion that it would have been
obvious to comminute the interference pigment of the modified Endres
process via a wet ball milling technique, as required by independent claim
52, such as milling via a high-speed rotary ball mill with rotor and stator for
1 to 6 hours, as required by independent claim 70, based upon a reasonable
expectation of successfully reducing pigment size to a desirable range with a
minimum of pigment damage.
We sustain, therefore, the Examiner’s § 103 rejections of the appealed
claims.
8
Appeal 2017-002907
Application 12/519,102
Conclusion
The decision of the Examiner is affirmed.
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
9