Ex Parte VOGT

Board of Patent Appeals and Interferences

Aug 30, 2002

08980349 (B.P.A.I. Aug. 30, 2002)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte REINER VOGT

_____________
Appeal No. 2000-1085
Application 08/980,3491
______________
ON BRIEF

_______________
Before PAK, WALTZ, and LIEBERMAN, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 2000-1085
Application No. 08/980,349
been indicated to be allowable if rewritten in independent form
including all of the limitations of the base claim and any
intervening claims.
According to appellant (Brief, page 2), “[s]eparate
consideration is respectfully requested for claims 5-7. Separate
arguments in support of patentability for these claims are
advanced below.” The appellant, however, has not supplied any
separate substantive argument as to the patentability of the
subject matter recited in claims 5 through 7. Therefore, for
purposes of this appeal, we select claim 1 from all of the claims
on appeal and determine the propriety of the examiner’s
rejections based on this claim alone consistent with 37 CFR
§ 1.192(c)(7)(1999) . Claim 1 is reproduced below:2
1. A conductive pigment, comprising a substrate coated with
a conductive layer containing tin oxide doped with phosphorus.
As evidence of obviousness, the examiner relies on the
following prior art:
Stahlecker et al.(Stahlecker) 5,320,781 Jun. 14, 1994
Bruckner et al.(Bruckner) 5,472,640 Dec. 5, 1995
Okuda et al.(Okuda) 0 582 371 A1 Sep. 2, 1994
Appeal No. 2000-1085
Application No. 08/980,349
Claims 1 through 7, 10 through 12, 14, 15 and 18 stand
rejected under 35 U.S.C. § 103 as unpatentable over the combined
disclosures of Bruckner and Okuda. Claims 1 through 12 and 14
through 18 stand rejected under 35 U.S.C. § 103 as unpatentable
over the combined disclosures of Stahlecker and Okuda.
Upon careful consideration of the opposing arguments and
evidence presented on appeal, we concur with the examiner that
the claimed subject matter as a whole would have been obvious to
one of ordinary skill in the art. Accordingly, we will sustain
the examiner’s § 103 rejections for essentially those reasons set
forth in the Answer and below.
The appellant does not dispute the examiner’s finding that
either Bruckner or Stahlecker discloses a conductive pigment
comprising a lamellar or platelet-like substrate coated with a
conductive layer. Compare the Answer, pages 4 and 6, with the
Brief and the Reply Brief in their entirety. The lamellar or
platelet-like substrate material described in Bruckner or
Stahlecker includes mica, kaolin, talc, glass and mica coated
Appeal No. 2000-1085
Application No. 08/980,349
The dispositive question is whether it would have been
obvious to one of ordinary skill in the art to employ tin oxide
doped with phosphorus as the conductive layer material of the
conductive pigment described in either Bruckner or Stahlecker.
On this record, we answer this question in the affirmative.
Although both Bruckner and Stahlecker teach that any
conventional conductive metal oxide or mixtures of metal oxides
can be used as the conductive layer material of their conductive
pigment, they indicate a preference for tin dioxide doped with
antimony as the conductive layer material. See Bruckner, column
2, line 65 to column 3, line 10 and Stahlecker, column 2, line 64
to column 3, line 25. However, Okuda teaches (page 2, lines 6-
11) that:
As an electroconductive powder, carbon black has
been known, but its use is highly restricted because of
its black colour, poor dispersibility in vehicles, of
containing carcinogenic substances, and like
limitations. Recently, tin oxide powder doped with
antimony, or titanium dioxide powder coated with a
layer of tin oxide doped with antimony have been
developed and used.
Appeal No. 2000-1085
Application No. 08/980,349
powder doped with phosphorus as a substitute for tin oxide powder
doped with antimony. See page 2, line 25 to page 3, line 51.
The specifically prepared tin oxide powder doped with phosphorus
is said to have “a powder electrical resistance of less than 500

cm, preferably less than 200
cm, more preferably , less than
100
cm.“ See page 3, lines 1-3. This powder is “a very fine,
transparent powder having superior electroconductive properties
as well as being safe to handle.” See the abstract.
Given these and other advantages taught in Okuda, we concur
with the examiner that it would have been prima facie obvious to
employ the specifically prepared tin oxide doped with phosphorus
taught in Okuda as the conductive layer material of the
conductive pigment of the type described in Bruckner or
Stahlecker. From the combined teachings of the applied prior art
references, one of ordinary skill in the art would have had a
reasonable expectation of successfully obtaining the advantages
indicated above by employing the specifically prepared tin oxide
doped with phosphorus as the conductive material for the
Appeal No. 2000-1085
Application No. 08/980,349
oxide doped with phosphorus taught in Okuda since such powder is
not expected to be dispersible in forming a conductive layer.
See the Brief, pages 4-5. This argument, however, is not
persuasive as it is not supported by any objective evidence. It
is well settled that mere arguments in the Brief or conclusory
statements in the specification cannot take the place of
objective evidence. See In re De Blauwe, 736 F.2d 699, 705, 222
USPQ 191, 196 (Fed. Cir. 1984). In any event, by indicating
superiority of its specifically prepared tin oxide doped with
phosphorus over both tin oxide doped with antimony and carbon,
Okuda impliedly teaches that its conductive material does not
suffer from the drawbacks of both carbon and tin oxide doped with
antimony (drawbacks include dispersibility problems).
The appellant argues (Brief, page 5) that:
the pigment of the invention possesses unexpected
advantages over Bruckner’s pigment (mica flakes crated
with antimony doped tin oxide) with respect to
temperature and weathering stability. Bruckner’s
pigment is generally calcined at 800 C. (See, e.g.,o
col. 4, lines 9-10), and the highest temperature of the
acceptable range of heating temperatures in only 900 Co
(See, e.g., col. 3, lines 28-30); on information and
Appeal No. 2000-1085
Application No. 08/980,349
However, it is well settled that mere conclusory statements of
superiority in the specification unsupported by objective
evidence are of little probative value. See In re Greenfield,
571 F.2d 1185, 1188, 197 USPQ 227, 229 (CCPA 1978). Moreover,
these alleged advantages are reasonably expected from the
sintering temperature and improved shelf-life stability of the
tin oxide doped with phosphorus described at page 2, lines 32-35
and 49-55, of Okuda. See, e.g., In re Skoner, 517 F.2d 947, 950,
186 USPQ 80, 82 (CCPA 1975)(“[e]xpected beneficial results are
evidence of obviousness of a claimed invention just as unexpected
beneficial results are evidence of unobviousness”).
The appellant also relies on the Vogt declaration and the
specification examples to show that the claimed subject matter
unexpectedly imparts lower resistance. The burden is on the
appellant to show that the claimed invention imparts unexpected
results. In re Klosak, 455 F.2d 1077, 1080, 173 USPQ 14, 16
(CCPA 1972). However, on this record, we determine that the
Appeal No. 2000-1085
Application No. 08/980,349
177 USPQ 139, 143 (CCPA 1973); Klosak, 455 F.2d at 1080, 173 USPQ
at 16. As indicated supra, however, Okuda teaches that the
improvement alleged by the appellant is expected from using its
specially prepared tin oxide doped with phosphorus. The
appellant has not demonstrated that the tin oxide doped with
phosphorus taught in Okuda would not have the same property, when
it is used in the conductive pigment of the type described in
Bruckner or Stahlecker.
Second, the evidence relied upon is not reasonably
commensurate in scope with the degree of protection sought by the
claims on appeal. In re Clemens, 622 F.2d 1029, 1035, 206 USPQ
289, 296 (CCPA 1980). While the showing is limited to applying a
specifically prepared tin oxide doped with phosphorus on a
specific substrate, the claims are not so limited. As indicated
at page 2 of Okuda, not all tin oxides doped with phosphorus, for
example, would behave in the same manner.
Finally, to the extent that the showing in the Vogt
declaration and the specification evidences that the appellant
Appeal No. 2000-1085
Application No. 08/980,349
obvious, known advantages of employing Okuda’s tin
oxide doped with phosphorus outweigh the newly discovered
advantages. See In re Nolan, 553 F.2d 1261, 1267, 193 USPQ 641,
645 (CCPA 1977).
Thus, having considered all of the evidence of record, we
determine that the evidence of obviousness, on balance, outweighs
the evidence of nonobviousness. Hence, we determine that the
claimed subject matter as a whole would have been obvious to one
of ordinary skill in the art in view of the applied prior art
references. Accordingly, we affirm the examiner’s decision
rejecting all of the appealed claims under 35 U.S.C. § 103.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
CHUNG K. PAK )
Administrative Patent Judge )
)
Appeal No. 2000-1085
Application No. 08/980,349
PAUL LIEBERMAN )
Administrative Patent Judge )
Millen, White, Zeland & Branigan
Arlington Courthouse Plaza 1
Suite 1400
2200 Clarendon Blvd.
Arlington, VA 22201