Ex Parte Shimizu et al

Patent Trial and Appeal Board

May 31, 2018

13380156 (P.T.A.B. May. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/380, 156 12/22/2011
23599 7590 06/04/2018
MILLEN, WHITE, ZELANO & BRANIGAN, P.C.
2200 CLARENDON BL VD.
SUITE 1400
ARLINGTON, VA 22201
Kaiman Shimizu
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
MERCK-3916 5032
EXAMINER
LEWIS, JUSTIN V
ART UNIT PAPER NUMBER
3638
NOTIFICATION DATE DELIVERY MODE
06/04/2018 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):
docketing@mwzb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KAIMAN SHIMIZU, TAMIO NOGUCHI, FUMIKO SASAKI,
YUKITAKA WATANABE, andMASAHIKOYAZAWA
Appeal2017-002275
Application 13/3 80,156
Technology Center 3700
Before ANNETTE R. REIMERS, LISA M. GUIJT, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-002275
Application 13/380,156
STATEMENT OF THE CASE 1
Kaiman Shimizu et al. (Appellants) appeal under 35 U.S.C. § I34(a)
from the Examiner's decision to reject under 35 U.S.C. § I03(a): (1) claims
1, 2, 4--7, 9--12, and 30 as unpatentable over Schmid (WO 2006/061301 Al,
published June 15, 2006)2, Krietsch (WO 2009/077122 A2, published June
25, 2009)3, Sadamura (EP O 422 755 Al, published Apr. 17, 1991), and
Disano (EP 1 504 923 A2, published Feb. 9, 2005); (2) claim 3 as
unpatentable over Schmid, Krietsch, Sadamura, Disano, and Yokote (US
2004/0195823 Al, published Oct. 7, 2004); (3) claim 23 as unpatentable
over Schmid, Sadamura, and Yokote; and ( 4) claims 24--27 as unpatentable
over Schmid, Sadamura, Yokote, and Disano. Claims 13-22, 28, and 29
1 The Examiner's objection(s) to claims 5, 23, and 30 are not appealable
matters, but rather are petitionable matters, and thus, are not within the
jurisdiction of the Board. See Final Office Action 2 (hereinafter "Final Act.")
(dated Nov. 30, 2015); see also Appeal Brief 3 (hereinafter "Appeal Br.")
( filed Mar. 16, 2016); Reply Brief 9--10 (hereinafter "Reply Br.") ( filed Dec.
5, 2016); 37 C.F.R. § 1.181; In re Berger, 279 F.3d 975,984 (Fed. Cir. 2002);
In re Mindick, 371 F.2d 892, 894 (CCPA 1967). Appellants correctly note
that "[t]he Examiner's Answer fails to make any comment regarding the
amendment [ to the claims] submitted with the Appeal Brief." See Reply Br.
9-10; see also Examiner's Answer 3-25 (hereinafter "Ans.") (dated Oct. 6,
2016).
2 Throughout the Final Office Action and the Examiner's Answer, the
Examiner refers to the US Patent Publication of Schmid (US 2009/0230670
Al, published Sept. 17, 2009). See Final Act. 3-13; see also Ans. 3-25.
3 Throughout the Final Office Action and the Examiner's Answer, the
Examiner refers to the US Patent Publication of Krietsch (US 2010/0258769
Al, published Oct. 14, 2010). See Final Act. 3-8, 11-12; see also Ans. 3-8,
16, 17, 19, and 20.
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Application 13/380,156
have been withdrawn from consideration. Claim 8 has been canceled. We
have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
CLAIMED SUBJECT MATTER
The claimed subject matter "relates to magnetic pigments comprising
a transparent flaky homogeneously composed substrate having two parallel
major surfaces and a coating comprising maghemite." Spec. 1 :3-5. Claims
1 and 23 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. Magnetic pigments, comprising a substrate and a coating
encapsulating the substrate wherein the substrate is a transparent
flaky homogeneously composed substrate having two parallel
major surfaces and wherein the coating comprises maghemite,
wherein the maghemite coating is doped with at least one
alkaline earth metal oxide.
ANALYSIS
Obviousness over Schmid, Krietsch, Sadamura, and Disano
Claims 1, 2, 4-7, 9-12, and 30
Independent claim 1 is directed to magnetic pigments having a flaky
substrate and a coating encapsulating the flaky substrate, wherein the flaky
substrate is "transparent." Appeal Br., Claims App. 14. The Examiner finds
that Schmid discloses the magnetic pigments of claim 1 substantially as
claimed except Schmid fails to disclose, inter alia, the "flake substrate being
transparent." See Final Act. 3.4 The Examiner finds that Krietsch discloses
4 The Examiner relies on Sadamura for disclosing "the concept of including
maghemite within a coating" and on Disano for disclosing "the concept of
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Application 13/380,156
"the concept of providing a transparent ... flake substrate material." Final
Act. 3 ( citing Krietsch ,r,r 23-25). The Examiner reasons that "[g]iven that
Schmid concerns a security element for a document, the security element
containing flake materials that can be semi-transparent (para. 28) and
Krietsch concerns the concept of providing flake materials (para. 23) for
security products (para. 9), the flakes being of a particular degree of semi-
transparency (para. 25)," it would have been obvious to a skilled artisan "to
apply the Krietsch teachings to the Schmid flakes, in order to yield a
collection of flakes capable of making the layer in which they are disposed
electrically conductive, as taught by Krietsch (abstract), thus making the
overall assembly more difficult to counterfeit." Id. at 3--4; see also id. at 11-
12 ("[W]hen the Krietsch reference teachings are applied to the Schmid
flakes [i.e., 'element 3 of Schmid'], such transparent flakes are yielded.").
Appellants contend that "modifying element 3 of Schmid to make it
90% transparent would destroy the Venetian blind property that Schmid
teaches to be of critical importance .... [ o ]ne skilled in the art would clearly
understand that a blind which allows 90% of the light to pass through it
(more than a typical window) is not adequately serving as a blind." Reply
Br. 5 ( citing Schmid ,r 28); see also Appeal Br. 5---6. Stated differently "if
element (3) of Schmid was modified to be 90% transparent, a viewer would
be able to see through these 'lamellae' at any angle of inclination.
Therefore, a 'Venetian blind effect' would not be achieved. Instead, Schmid
teaches that the pigment flakes are preferably totally opaque to visible light
providing a document of value with a dielectric layer comprising magnesium
oxide." See Final Act. 4.
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Application 13/380,156
because these flakes must prevent the transmission of light." Reply Br. 6
( citing Schmid ,r 28); see also Appeal Br. 5---6.
As an initial matter, we note that Appellants' Specification defines the
term "transparent" as "flaky substrates if they substantially transmit visible
light, i.e. to at least 90 % of the incoming visible radiation." Spec. 5: 14--16;
see also Ans. 16; Toro Co. v. White Consolidated Industries Inc., 199 F.3d
1295, 1301 (Fed. Cir. 1999) (Where an explicit definition is provided by the
applicant for a term, [the] definition will control interpretation of the term as
it is used in the claim.). We agree with Appellants that "[a] transparency of
at least 90% of visible light as claimed is ... a very high degree of
transparency." Reply Br. 5.
Schmid explicitly discloses that:
According to the present invention, ... any flake pigment can be
used, provided that it is of appropriate mechanical rigidity to act
as lamellae and thus to produce the Venetian Blind effect.
Moreover, as evident to the skilled man, the flake pigment
particles must be opaque, or, at least semi-opaque (semi-
transparent), in order to be able to act as screening lamellae.
Semi-opaque (semi-transparent) in the context of the present
disclosure means that the flake is absorbing in at least part of the
visible spectrum. According to a preferred embodiment, the
flake pigment is totally opaque to visible light.
Schmid ,r 28 ( emphasis added); see also Appeal Br. 5---6; Reply Br. 5---6.
Given that Schmid discloses "the flake pigment particles must be opaque,"
we interpret Schmid's disclosure of "the flake pigment particles" being
"semi-opaque/semi-transparent" to mean that "the flake pigment particles"
can be "translucent" (i.e., the flake pigment particles are slightly penetrable
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by light rays.). 5 See id. There is no indication in the cited portions of
Schmid, however, that a transparency of 90% of visible light would be
sufficiently opaque to preserve the Venetian Blind effect.
Both the Examiner and Appellants agree that "the pigment substrates
of Krietsch are highly transparent and capable of transmitting visible light to
the extent of at least 90%." Reply Br. 5 (citing Krietsch ,r 25); see also Final
Act. 3--4; Ans. 16, 17, 19, and 20.
In this case, the Examiner finds that Schmid discloses "pigment flakes
3 are encapsulated/contained within a transparent coating." Ans. 11
( emphasis added) ( citing Schmid ,r 81 ); see also id. at 18. The Examiner
further finds that "the Krietsch teachings are applied to the Schmid pigment
flakes 3, and by way of that, the Schmid pigment flakes are afforded the
desired 90% degree of transparency." Id. at 16. However, the Examiner
fails to adequately explain how the modified pigment flakes 3 of Schmid,
which have at least a "90% degree of transparency" in view of the teachings
of Krietsch and are "encapsulated/contained within a transparent coating,"
would maintain "the Venetian Blind effect" desired by Schmid. See Ans. 11
( emphasis added), 16, 18; see also Appeal Br. 5---6; Reply Br. 5---6; Schmid
i128.
The Examiner further takes the position that "the proposed
combination merely calls for some of the Krietsch teachings (particularly
with regard to its 90% degree of transparency) to be applied to the Schmid
pigment flakes" and that "[t]he pigment flakes [3 of Schmid] are not
5 Definition of "translucent" "allowing light to pass through partially or
diffusely; semitransparent." https://www.collinsdictionary.com/dictionary/
english/translucent (last visited May 28, 2018).
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altogether replaced." See Ans. 16, 17, 19. However, the Examiner fails to
adequately explain how pigment flakes 3 of Schmid are being modified in
view of the transparency teachings of Krietsch, such that "the Schmid
pigment flakes [3] retain the parts and properties crucial to their function
[i.e., 'the Venetian Blind effect'] in the overall Schmid assembly." See id.;
see also Appeal Br. 5---6; Reply Br. 5---6; Schmid ,r 28. The Examiner also
does not address whether the stated reasons for modifying Schmid outweigh
Schmid's teaching of the desirability of the Venetian Blind effect.
Moreover, we note that Schmid discloses that the "flake pigment can
have further additional properties, such as luminescence, electric conduction
and/or particular spectral absorption or reflection characteristics." Schmid
,r 29 (emphasis added). As such, we fail to see why a skilled artisan would
look to the "electrically conductive" teachings of Krietsch to modify
Schmid. See Final Act. 3--4.
For these reasons, we do not sustain the Examiner's rejection of
independent claim 1, as well as dependent claims 2, 4--7, 9--12, and 30 as
unpatentable over Schmid, Krietsch, Sadamura, and Disano.
Obviousness over Schmid, Krietsch, Sadamura, Disano, and Yokote
Claim 3
The Examiner's rejection of claim 3 as unpatentable over Schmid,
Krietsch, Sadamura, Disano, and Yokote is based on the same unsupported
findings and conclusions discussed above with respect to independent claim
1. See Final Act. 7-8. The Examiner does not rely on Y okote to remedy the
deficiencies of Schmid and Krietsch. Accordingly, for reasons similar to
those discussed above for claim 1, we do not sustain the Examiner's
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rejection of claim 3 as unpatentable over Schmid, Krietsch, Sadamura,
Disano, and Y okote.
Obviousness over Schmid, Sadamura, and Yokote
Claim 23
Independent claim 23 is directed to magnetic pigments having a
"transparent" flaky substrate. Appeal Br., Claims App. 17. The Examiner
finds that Schmid discloses magnetic pigments 3 including a "transparent"
flaky substrate (i.e., "pigment flakes themselves"). See Final Act. 8 (citing
Schmid Abstract, Figs. lA-G). 6 As an initial matter, Schmid discloses "a
coating layer" not flake pigment particles 3 as "appear[ing] transparent at
certain angles of view." See Schmid Abstract; see also id. ,r 81 ("flake
pigment particles contained in a transparent coating.") (emphasis added).
Appellants' Specification defines the term "transparent" as "flaky substrates
if they substantially transmit visible light, i.e. to at least 90 % of the
incoming visible radiation." See Spec. 5:14--16; see also Ans. 16. We
interpret claim 23 to require the "transparent flaky ... substrate" to transmit
at least 90% of the incoming visible radiation from substantially all angles,
not just certain angles of view.
The Examiner acknowledges that "Schmid does not disclose its flakes
specifically being 90% transparent." Ans. 16; see also Appeal Br. 13. In
fact, Schmid discloses that "the flake pigment particles must be opaque or, at
least semi-opaque (semi-transparent), in order to be able to act as screening
6 The Examiner relies on Sadamura for disclosing "the concept of including
maghemite within a composition" and on Y okote for disclosing "the concept
of utilizing glass flakes within a composition." See Final Act. 8-9.
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lamellae" (i.e., "to produce the Venetian Blind effect."). See Schmid ,r 28.
The Examiner appears to take the position that Appellants' definition of the
term "transparent" would include the flake pigment particles of Schmid
being "semi-transparent." See Ans. 16, 24--25. However, as discussed
above, we agree with Appellants that "[a] transparency of at least 90% of
visible light as claimed is ... a very high degree of transparency." Reply Br.
5. There is no indication in the cited portions of Schmid that a transparency
of 90% of visible light would be sufficiently opaque to achieve the Venetian
Blind effect described in Schmid. Based on the foregoing reasons, the
Examiner fails to establish by a preponderance of the evidence that Schmid
discloses the claimed "transparent" flaky substrate.
Accordingly, we do not sustain the Examiner's rejection of
independent claim 23 as unpatentable over Schmid, Sadamura, and Yokote.
Obviousness over Schmid, Sadamura, Yokote, and Disano
Claims 24-27
The Examiner's rejection of claims 24--27 as unpatentable over
Schmid, Sadamura, Y okote, and Disano is based on the same unsupported
findings and conclusions discussed above with respect to independent claim
23. See Final Act. 9-10. The Examiner does not rely on Disano to remedy
the deficiencies of Schmid. Accordingly, for reasons similar to those
discussed above for claim 23, we do not sustain the Examiner's rejection of
claims 24--27 as unpatentable over Schmid, Sadamura, Y okote, and Disano.
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DECISION
We REVERSE the decision of the Examiner to reject claims 1-7, 9-
12, 23-27, and 30.
REVERSED
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