Ex Parte Trummer et al

Patent Trial and Appeal Board

Feb 21, 2019

12515090 (P.T.A.B. Feb. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/515,090 05/15/2009 Stefan Trummer
2352 7590 02/25/2019
OSTROLENK FABER LLP
845 THIRD A VENUE
NEW YORK, NY 10022
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.
P/746-41 (V 12096) 6283
EXAMINER
GREENE, NAN A
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
02/25/2019 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):
pat@ostrolenk.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEP AN TRUMMER,
MICHAEL BECKER, and THOMAS SCHLEGL
Appeal2017-006755
Application 12/515,090
Technology Center 1600
Before FRANCISCO C. PRATS, DEBORAH KATZ, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
MAJORS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 submit this appeal under 35 U.S.C. § 134(a) involving
claims to platelet-like pigments having a narrow thickness distribution. The
Examiner rejected the claims as obvious and for obviousness-type double
patenting. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse the rejection for obviousness, but affirm the rejection for
obviousness-type double patenting.
1 Appellants identify the Real Party in Interest as Eckart GmbH. App. Br. 2.
Appeal2017-006755
Application 12/515,090
STATEMENT OF THE CASE
Appellants' "invention relates to thin platelet-like aluminum pigments
having a narrow thickness distribution." Spec. 1 :4--5. According to the
Specification, "[p ]latelet-like aluminum pigments are effect pigments and
are distinguished by their unique metallic appearance and their high
covering power." Id. at 1 :7-8. The Specification explains that, to create
favorable properties ( e.g., metallic effect and brightness) in pigments, many
factors are important, including "orientation, their size and size distribution,"
among others. Id. at 1:8-15. The Specification further explains that "so-
called 'PVD pigments"' provide favorable characteristics such as brilliance
and high gloss, but that such pigments also have drawbacks, such as
"extremely high production costs."2 Id. at 2:7-10, 3: 1-2.
According to the Specification, "[i]t has been found, very surprisingly,
that the aluminum pigments of the invention have a metallic gloss [in
applications] which has hitherto not been achieved in conventional pigments
prepared by wet grinding, but has only been possible with PVD pigments."
Id. at 10: 9-12. The Specification further discloses that, where "an almost
mirror-like effect is observed when PVD pigments are used ... [,]
[ s ]urprisingly, a similar effect can be achieved with the aluminum effects of
the invention," which effect the Specification states is likely due to "[t]he
small overall thickness of the pigments and the small breadth of thickness
distribution." Id. at 10:13-19.
2 The Specification contrasts PVD pigments with another class of aluminum
pigments ("so-called 'silver dollar pigments"') that are prepared by wet
grinding of aluminum shot. Spec. 2:7-10.
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Application 12/515,090
Claims 1-3, 5-16, and 36-38 are on appeal. Claim 1, the only
independent claim, is illustrative and is reproduced below:
1. Platelet-like aluminum pigments having a narrow
thickness distribution and at least partially coated with lubricant,
wherein the pigments have
a) a mean thickness hso of from 15 nm to 75 nm as determined
by scanning electron microscope thickness count,
b) a relative breadth of thickness distribution L'ih of from 30 %
to less than 70 %, as determined by a scanning electron
microscope thickness count and as calculated on the basis of
the corresponding cumulative breakthrough curve of the
relative frequencies of occurrence, according to the formula
L'ih = 1 OOx(h90-h10) / hso, and
c) an X-ray diffractogram, measured on pigments in
substantially plane parallel orientation, having one or two
main peaks which do not correspond to the [ 111] reflexes,
wherein the platelet-like aluminum pigments are produced by a
method comprising
(1) providing aluminum shot exhibiting a particle size
distribution having a dshot, 10< 0.6 µm, a dshot, so< 2.0
µm and a dshot, 90 < 4.0 µm, wherein the aluminum shot
is prepared in an atomizer by atomization of liquid
aluminum, and
(2) grinding the aluminum shot as defined in (1) above
using a grinder in the presence of solvent and
lubricants and grinding media having an individual
weight of from 1.2 mg to 13 mg.
App. Br. 12 (Claims App.).
The claims stand rejected as follows:
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Application 12/515,090
Claims 1-3, 5-16, and 36-38 under 35 U.S.C. § I03(a) as obvious
over Minami, 3 Wheeler '0794 in view of Schlegl, 5 Wheeler, 6 and as
optionally evidenced by Valimet. 7 See Ans. 2; Non-Final Rejection (dated
Jan. 22, 2016) 3-11 (hereafter "Non-Final Act.").
Claims 1-3, 5-16, and 36-38 for obviousness-type double patenting
over the '832 patent8 in view of Minami, Wheeler '079, and Wheeler.
An oral hearing before the Board took place on February 5, 2019. A
transcript of that hearing will be entered in the prosecution record.
DISCUSSION
Obviousness-35 USC§ 103(a)
Claim 1
The issue on appeal is whether a preponderance of the evidence cited
by the Examiner establishes that claim 1 would have been obvious over the
cited references.
The Examiner finds that Minami "teaches aluminum flake pigments
having excellent metallic luster and an average thickness (h50) in the range of
0.025 to 0.08 µm (i.e. 25-80 nm)," as well as a low-cost manufacturing
process that includes grinding with steel balls in the presence of an organic
3 Minami, EP 1621586 Al, published Feb. 1, 2006.
4 Wheeler, US 2010/0167079 Al, published July 1, 2010.
5 Thomas Schlegl et al., US 2007/0199478 Al, published Aug. 30, 2007.
6 Ian Wheeler, Metallic Pigments in Polymers, Rapra Technology Limited
11-53 (1999).
7 Valimet Inc., Spherical Aluminum Powder, Rev. 1.1, published Mar. 20,
2006. The Examiner does not include, in the rejection on appeal or in the
Answer, any findings specific to Valimet. So, that reference is not
considered further in this Decision.
8 Maennig et al., US 8,333,832 B2, issued Dec. 18, 2012.
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Application 12/515,090
solvent. Non-Final Act. 4; see, e.g., Minami ,r,r 17, 49--51 (Example 1).
According to the Examiner, however, Minami "does not expressly disclose
the instantly claimed span (i.e. relative breadth of thickness distribution L'ih),
or the X-ray diffractogram for the resulting aluminum pigment." Non-Final
Act. 4.
With respect to the "wherein" clause of claim 1, which recites that the
"pigments are produced by a method comprising," inter alia, providing
aluminum shot having a particular particle size distribution, the Examiner
turns to Wheeler '079. Non-Final Act. 7. More specifically, the Examiner
cites a teaching in Wheeler that "[ t ]here is a need for a metal powder that has
both low median particle diameter and a narrow particle size distribution,"
and that, by using such a metal powder in preparation of metal flake
pigments "a substantially monodisperse metal flake pigment product may be
obtained in virtually 100% yield." Id. (quoting Wheeler '079 ,r 15 (emphasis
omitted)); see also Non-Final Act. 6 (citing the Wheeler publication
regarding processes for manufacturing aluminum flake pigments from
atomized aluminum powder). According to the Examiner, one "would
clearly have been motivated to use a narrow size distribution of the
aluminum shot starting material in order to obtain a more uniform platelet-
like [appearance]," in view of Wheeler '079. Non-Final Act. 10.
The Examiner also cites Schlegl as teaching aluminum pigments with
a narrow distribution of thickness. Non-Final Act. 7-8. According to the
Examiner, "[t]he only difference between the teachings of SCHLEGL and
the instant application appears to be the relative breadth of thickness
distribution L'ih (i.e. the span)." Id. at 8. Yet, the Examiner asserts, by
adjusting speeds of rotation for milling the pigments, the ordinarily skilled
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Application 12/515,090
person would have arrived at pigments with a L'ih of from 30-70% as
claimed. Id. at 9.
The Examiner then concludes it would have been obvious "to produce
a platelet-like aluminum pigment starting with aluminum shot having a
narrow size distribution, and using a ball mill and adjusting the parameters
according to the knowledge in the art pertaining to ball mill pigment
production." Non-Final Act. 10. According to the Examiner, a motivation
to produce different grades of pigment, and using aluminum shot with a
narrow size distribution, comes from "the economics and coloristic
attractiveness of the product." Id. at 11. The Examiner asserts that
"aluminum shot having a narrow size distribution ... was known at the time
of the claimed invention and it would have been obvious to select as a
suitable aluminum shot material such as suggested by WHEELER ['079]."
Id. The Examiner further asserts that there would be a reasonable
expectation of success in arriving at the claimed subject matter because
adjusting parameters for pigment production is "considered within the
ordinary skill in the art." Id.
At the outset, Appellants contend that "[i]ndependent claim 1 ... is
written in a product-by-process format." App. Br. 5; see also Non-Final
Act. 13 (Examiner agreeing that "[t]he claim is constructed as a product-by-
process claim"). According to Appellants, the claimed invention recognizes
the importance of ( and obtains "unexpectedly improved results with")
pigments that have a relatively narrow breadth of thickness distribution and
that are produced from aluminum shot having a relatively narrow particle
size distribution. App. Br. 5. Appellants argue that Minami, on the other
hand, is concerned with average diameters and average thicknesses, which,
Appellants note, are different particle parameters than thickness and particle
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Application 12/515,090
size distributions. Id. Appellants contend that Minami "does not provide
any motivation at all to either optimize the particle size distribution or the
thickness distribution of the flakes." Id. at 6.
Second, Appellants contend that Minami ( and the claims) require the
use of atomized aluminum powder as the starting material. Id. at 7.
According to Appellants, Wheeler '079 discloses that producing atomized
aluminum powder in high yields is technically difficult and poses other
limitations and challenges. Id. (citing Wheeler '079 ,r,r 6-9); see, e.g.,
Wheeler '079 ,r 6 ( describing "a possibility of explosion" when atomizing
reactive metals, such as aluminum), ,r 8 ("The second characteristic
exhibited by conventional atomisation processes is the generation of powder
with a wide particle size distribution"); see also id. (Table 1 (illustrating a
typical distribution)). So, Appellants argue, Wheeler '079 teaches preparing
pigments using starting materials produced, not via atomization of aluminum
as in claim 1, but with a "jetting process wherein molten metal is rejected
[sic] from a jet head." App. Br. 7. According to Appellants, Wheeler '079
therefore teaches away from the present invention. 9
Appellants further contend that, even with the particle distributions
described in Wheeler '079, those distributions are substantially different
than what is claimed. Id. at 8. For example, Appellants highlight that only
0.22% of the particles in Wheeler have a size less than 4 µm, nowhere near
9 Appellants also argue, as allegedly evidenced by the June 12, 2015
Declaration of Dr. Stefan Engel ( along with the attachment to that
declaration)), that Wheeler '079 is not enabled for the jetting of molten
aluminum. App. Br. 7. As Appellants argue, and Dr. Engel opines, the high
melting temperature of aluminum (roughly 660°C) would not work with,
and indeed would melt, the piezoelectric jetting mechanisms described in
Wheeler '079. Id.; see also Engel Deel. ,r,r 7-15.
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Application 12/515,090
the requirement in claim 1 that 90% of the aluminum shot particles in the
distribution have a size under 4 µm. Id. ( dshot, 90 < 4.0 µm in the claims). Id.
Appellants also argue that the thickness distribution in Schlegl is not
the thickness distribution as claimed - L'ih from 30 % to less than 70 %. To
the contrary, Appellants contend, Schlegl discloses that the L'ih is between
70-140%, and "thus teaches away from the present invention." App. Br. 8.
Moreover, Appellants contend, the other cited references do not provide an
adequate disclosure of the pigments' thickness distribution that is claimed,
or an adequate reason to modify that parameter. Id. at 9.
In addition to the above, Appellants also argue that they have
provided evidence of unexpected results in terms of the recited pigments'
optical properties. Id. at 1 O; see Trummer Deel. ( dated Dec. 21, 2015), ,r 21;
Spec. 33:20-24, 36:16-37:3.
Upon considering the Examiner's findings and assertions related to
the cited prior art, and Appellants' argument in response, we are not
persuaded on this record that the Examiner met the burden to establish a
prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992) (The Examiner "bears the initial burden ... of presenting a prima
facie case of unpatentability."). We explain further below.
Appellants and the Examiner appear to agree that claim 1 is a product-
by-process claim. With product-by-process claims, the manner in which the
product is made is, as a legal matter, generally not limiting. In re Thorpe,
777 F .2d 695, 697 (Fed. Cir. 1985) ("The patentability of a product does not
depend on its method of production. 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 product was made by a different
process."). Nevertheless, the Examiner appears to have sought to find in the
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Application 12/515,090
art a disclosure of the method of production steps recited in claim 1, likely to
help show that other features ( e.g., elements (b) and ( c)) of the claimed
pigments are present with the prior art combination. And we are constrained
by the Examiner's findings and reasoning on this record. 10
Insofar as the Examiner attempts to find a teaching of the aluminum
shot starting material having the specific particle size distribution in part ( 1)
of claim 1 's wherein clause (related to the method by which the recited
pigments are made), we are unpersuaded such material is disclosed in the
cited prior art. Although we agree with the Examiner that Wheeler '079
provides a motivation to use a powder with a narrow particle size
distribution for the starting material, Wheeler '079 goes in a different
direction than the claims. Wheeler '079 uses a jetting process, not an
"atomization of liquid aluminum" as claimed. Wheeler '079, Abstract, ,r,r 1,
18. Moreover, as Appellants note, Wheeler '079 also points out the
substantial technical challenges of using an atomization process with
aluminum, and further evidences that the result of atomization is
conventionally the production of a powder "with a wide particle size
distribution." Id. ,r,r 7-9 ("The twin limitations of fine powder production
and wide particle size distribution have a consequential limiting effect on the
10 We observe that Schlegl discloses aluminum pigments with a mean
thickness range that overlaps with the mean thickness range of claim 1,
element (a), and further discloses a L'ih (thickness distribution) that, even if
not overlapping, essentially abuts the range recited in element (b) of claim 1.
Schlegl, Abstract. Whether element ( c) as recited in claim 1 would be
present in such pigments in Schlegl, and whether there is any criticality to a
L'ih of 70% and above (as in Schlegl) or less than 70% (as in claim 1) are
matters not addressed in the existing appeal record and, thus, are beyond the
scope of this decision and appeal.
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Application 12/515,090
characteristics of metal flakes prepared from atomised powders."). Even if
not a teaching away, as Appellants argue, we are unpersuaded here that the
ordinarily skilled person would have had a reasonable expectation of success
in providing the aluminum shot material with the specific and narrow
particle size distribution recited in step ( 1) of claim 1 's wherein clause.
Without a satisfactory showing that the limitations in claim 1 's wherein
clause would have been obvious over the cited art, we are unpersuaded the
Examiner has demonstrated on this record that the other claim elements -
each of limitations (a), (b ), and ( c) are disclosed in the prior art combination.
For the above reasons, we are unpersuaded the preponderance of the
evidence cited by the Examiner demonstrates that claim 1 ( or the rejected
dependent claims) would have been obvious over the applied art. We need
not reach Appellants' evidence of alleged unexpected results.
Obviousness-Type Double Patenting
The Examiner finds that claim 1 would have been obvious over at
least claims 6, 7, and 9 of the '832 patent. Non-Final Act. 19. According to
the Examiner, the "difference between the instantly rejected claims and the
claims of the '832 [patent] is that the claims of the '832 [patent] are drawn to
a composition comprising the instantly claimed aluminum pigments." Id.
Moreover, the Examiner concludes, claim 1 is merely an "obvious variant of
the claims of the '832 [patent] because [it] includes pigments having the
same structures and properties as now claimed." Id. at 20.
On the issue of obviousness-type double patenting, the Examiner's
findings and conclusion are persuasive. Claim 1 of the '832 patent is to a
preparation including aluminum effect pigments; dependent claim 6 recites
an average pigment thickness from 15 to 150 nm; dependent claim 7 recites
that the pigments have a thickness distribution L'ih of 30-150%; and
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dependent claim 9 recites an x-ray diffractogram on the pigments showing
main peaks that are [111] or [222] reflections. '832 patent, 18:8-17, 18:30-
39, 18:48-52. Hence, the claims of the '832 patent, in combination, disclose
each of limitations (a), (b ), and ( c) of pending claim 1. As explained above,
the method of production steps in claim 1 's wherein clause are not limiting
where, as Appellants urge, the claim is drafted in product-by-process form.
In re Thorpe, 777 F .2d at 697.
Appellants' only argument related to the double patenting rejection is
that Minami, Wheeler '079, and Wheeler, do not teach or suggest the use of
aluminum shot with the narrow particle size distribution in forming
aluminum pigments. App. Br. 11. Again, the aluminum shot relates to the
production steps of claim 1, which are legally irrelevant where the claims of
the '83 2 alone disclose pigments with all of features (a), (b ), ( c) of claim 1.
For the above reasons, the double-patenting rejection of claim 1 is
affirmed. Appellants do not argue dependent claims 2, 3, 5-16, and 36-38
separately, and the double-patenting rejection of those claims is, therefore,
also affirmed.
SUMMARY
We reverse the rejection for obviousness, but affirm the rejection for
obviousness-type double patenting.
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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