Mathias, Marcus et al.

Patent Trials and Appeals Board

Aug 12, 2019

13881469 - (D) (P.T.A.B. Aug. 12, 2019)

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.
13/881,469 04/25/2013 Marcus Mathias MERCK-4064 9204
23599 7590 08/12/2019
MILLEN, WHITE, ZELANO & BRANIGAN, P.C.
2200 CLARENDON BLVD.
SUITE 1400
ARLINGTON, VA 22201
EXAMINER
GREENE, IVAN A
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
08/12/2019 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):
docketing@mwzb.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARCUS MATHIAS and MEIKE SAATZE
____________

Appeal 2019-003470
Application 13/881,4691
Technology Center 1600
____________

Before DONALD E. ADAMS, ERIC B. GRIMES, and
RACHEL H. TOWNSEND, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This Appeal under 35 U.S.C. § 134(a) involves claims 1 and 4–24
(App. Br. 1). Examiner entered rejections under 35 U.S.C. § 103(a) and
obviousness-type double patenting. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM; however, because our reasoning differs from
Examiner’s, we designate this affirmance a New Ground of Rejection.

1 Appellants identify “Merck Patent GmbH” as the real party in interest
(Appellants’ October 22, 2018 Appeal Brief (App. Br.) 1).
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STATEMENT OF THE CASE
Appellants’ disclosure “relates to pigments based on multicoated
flake-form substrates which are distinguished by the fact that they have at
least 8 layers on the surface, and to the use thereof, inter alia in paints,
surface coatings, printing inks, plastics and in cosmetic formulations”
(Spec.2 1: 7–10). Appellants’ claims 1 and 17 are representative and
reproduced below:
1. A pigment based on coated flake-form substrates, which
comprises at least the following 8 layers (A) - (H), on a flake-
form substrate, where layer (A) is located directly on the
surface of the substrate:
(A) a layer comprising SiO2,
(B) a colourless coating having a refractive index n ≥ 1.8,
(C) a colourless coating having a refractive index n ≥ 1.8,
where layer (C) is chemically non-identical to layer (B),
(D) a coloured coating having a refractive index n ≥ 1.8,
(E) optionally, a colourless coating having a refractive index
n < 1.8,
(F) a colourless coating having a refractive index n ≥ 1.8,
(G) a colourless coating having a refractive index n ≥ 1.8,
where layer (G) is chemically non-identical to layer (F),
(H) a coloured coating having a refractive index n ≥ 1.8,
and optionally
(I) an outer protective layer.
(App. Br. 19.)
17. The pigment of claim 1, wherein:
the thickness of layer (A) is 3 - 150 nm;

2 Appellants’ April 25, 2013 Specification.
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the thickness of Layer (B) is 1 - 50 nm;
the thickness of Layer (C) is 5 - 300 nm;
the thickness of layer (D) is 1 - 100 nm;
the thickness of layer (E), when present, is 5 - 500 nm;
the thickness of Layer (F) is 1 - 50 nm;
the thickness of layer (G) is 5 - 300 nm; and
the thickness of layer (H) is 1 - 100 nm.
(App. Br. 21.)

Grounds of rejection before this Panel for review:
Claims 1 and 4–24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Rueger ’609,3 Wilhelm,4 Pfaff,5 and
Schmidt.6
Claims 1 and 4–24 stand rejected under the judicially created doctrine
of obviousness-type double patenting as being unpatentable over the claims
of Rueger ’901,7 in combination with Wilhelm, Pfaff, and Schmidt.
Claims 1 and 4–24 stand rejected under the judicially created doctrine
of obviousness-type double patenting as being unpatentable over the claims
of Handrosch ’211,8 in combination with Rueger ’609, Wilhelm, Pfaff, and
Schmidt.

3 Rueger et al., US 2006/0225609 A1, published Oct. 12, 2006.
4 Wilhelm, WO 2009/129941 A2, published Oct. 29, 2009. Examiner relied
on Wilhelm US 2011/0088595 A1, published Apr. 21, 2011, for an English
translation (see Examiner’s February 22, 2018 Final Office Action (Final
Act.) 4). We do the same.
5 Pfaff, Special Effect Pigments Based on Silica Flakes, 39 INORGANIC
MATERIALS 123–126 (2003).
6 Schmidt et al., US 2009/0056591 A1, published Mar. 5, 2009.
7 Rueger et al., US 8,500,901 B2, issued Aug. 6, 2013.
8 Handrosch et al., US 8,114,211 B2, issued Feb. 14, 2012.
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Obviousness:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
We adopt Examiner’s findings concerning the scope and content of
the prior art (Final Act. 4–11), and provide the following findings for
emphasis.
FF 1. Rueger ’609 “relates to interference pigments based on multi-coated
flake-form substrates and to the use thereof, inter alia in paints, coatings,
printing inks, plastics and in cosmetic formulations” (Rueger ’609 ¶ 1; see
generally Final Act. 5–6).
FF 2. Rueger ’609 discloses:
Suitable base substrates for the interference pigments
according to the invention are colourless or selectively or non-
selectively absorbent flake-form substrates. Suitable substrates
are, in particular, phyllosilicates, such as natural and/or
synthetic mica, talc, kaolin, flake-form iron or aluminium
oxides, glass flakes, SiO2 flakes, TiO2 flakes, graphite flakes,
synthetic support-free flakes, titanium nitride, titanium silicide,
liquid crystal polymers (LCPs), holographic pigments, BiOCI
and flake-form mixed oxides, or mixtures thereof. Particularly
preferred substrates are glass flakes, mica flakes and Al2O3
flakes.
(Rueger ’609 ¶ 21; see generally Final Act. 6.)
FF 3. Rueger ’609 discloses:
[I]nterference pigments based on flake-form substrates which
are distinguished by the fact that they comprise
(A) a layer of SiO2 having a layer thickness of 5-350 nm,
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(B) a high-refractive-index coating having a refractive index n
of >1.8
and/or
(C) an interference system consisting of alternating high- and
low-refractive-index layers and optionally
(D) an outer protective layer.
(Rueger ’609 ¶¶ 15–19; see generally Final Act. 6.)
FF 4. Rueger ’609 discloses that “[l]ayer (B) is preferably a metal-oxide
layer, in particular TiO2, Fe2O3, Fe3O4, SnO2, ZrO2 or Cr2O2” (Rueger ’609
¶ 32; see generally Final Act. 6).
FF 5. Rueger ’609 discloses that “[l]ayer (B) can . . . consist of a plurality
of high-refractive –index layers. Layer (B) preferably consists of only one
layer, furthermore of two layers” (Rueger ’609 ¶ 33; see generally Final Act.
14).
FF 6. Rueger ’609 discloses that “[t]he term high-refractive-index coatings
is taken to mean layers having a refractive index of >1.8, and the term low-
refractive-index layers is taken to mean those having n[≤]1.8” (Rueger ’609
¶ 70; see generally Final Act. 5–6).
FF 7. Rueger ’609 discloses that “high- and/or low-refractive-index layers
(layer C) can be applied alternately to layer (B). The number of layers is
preferably two, furthermore three, four, five, six or seven layers” (Rueger
’609 ¶ 35; see also id. ¶ 37 (Rueger ’609 discloses that “[i]nstead of layer
(B), an interference system comprising alternating high- and low-refractive-
index layers (layer C) can also be applied directly to the SiO2 layer”); see
Final Act. 7).
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FF 8. Rueger ’609 discloses that “[s]uitable materials as high-refractive-
index layer are all those mentioned for layer (B)” (Rueger ’609 ¶ 39; see FF
4; see generally Final Act. 6).
FF 9. Rueger ’609 discloses that “[t]he high-refractive-index layers (B)
and/or (C) used can of course also be colourless high-refractive-index
materials, such as, for example, metal oxides, in particular TiO2 and ZrO2,
which have been coloured with temperature-stable absorbent colorants”
(Rueger ’609 ¶ 42; see generally Final Act. 4–5).
FF 10. Rueger ’609 discloses that “[i]n order to increase the light, water and
weather stability, it is frequently advisable, depending on the area of
application, to subject the finished pigment to post-coating or post-
treatment” layer D (Rueger ’609 ¶ 77; see generally Final Act. 6).
FF 11. Rueger ’609 discloses:
Interference pigments are employed as lustre or effect
pigments in many areas of industry, in particular in decorative
coating, in plastics, in paints, coatings, printing inks and in
cosmetic formulations. Pigments which exhibit an angle-
dependent colour play between a plurality of interference
colours are, owing to their colour play, of particular interest for
automotive paints, counterfeiting proof securities and in
decorative cosmetics.
Interference pigments generally consist of flake form
supports which are coated with thin metal-oxide layers. The
optical effect of these pigments is based on directed reflection
of light at the flakes which are predominantly aligned parallel.
Reflection of the light at the interfaces of layers of different
refractive index causes the formation of interference colours.
(Rueger ’609 ¶¶ 2, 3.)
FF 12. Examiner finds that Rueger ’609 “does not expressly teach an
example having layers (A) to (H)” (Final Act. 7).
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FF 13. Rueger ’609 discloses that “[l]ayer (A) has [a] thickness[] of 5-350
nm” and that “[t]he thickness of the high-refractive-index layers depends on
the desired interference colour,” wherein Rueger ’609 prefers that layer (B)
has a thickness of 60-300 nm and layer (C) has a thickness of 40-800 nm
(Rueger ’609 ¶¶ 28, 34, and 38; see also id. at 76 (“[t]he hue of the
interference pigments can be varied in very broad limits through the
different choice of the coating amounts or the layer thicknesses resulting
therefrom.”); see Final Act. 9–10).
FF 14. Examiner finds that Wilhelm discloses “a layered pigment having
the following structure: glass platelets + SiO2 + TiO2 + Fe2O3 . . ., and
further suggest the TiO2 is present in the rutile (tetragonal crystal
arrangement) structure” (Final Act. 7 (citing Wilhelm ¶¶ 29 and 62)
(emphasis omitted)).
FF 15. Examiner finds that Pfaff discloses “‘a thin intermediate SnO2 layer
is applied to the surface of the silica flakes before the TiO2 deposition. The
SnO2 layer has the rutile structure and acts as a template for the following
TiO2 layer’” (Final Act. 7–8 (citing Pfaff 124) (emphasis omitted)).
FF 16. Examiner finds that Schmidt discloses:
a protective layer of SiO2 followed by an organochemical
aftercoat applied to the metal oxide coated glass flakes. . . .
Regarding the inclusion of a layer (A1) on the SiO2 (A) layer
covering the substrate, [Schmidt] teaches pigments that include
alternating high and low refractive index metal oxides as the
critical feature of multilayered effects pigments and further
teaches that metal oxides of low refractive index can [be]
directly deposited one on the other so long as the broader
structure includes alternating layers of high and low refractive
index metal oxides.
(Final Act. 9 (citing Schmidt ¶¶ 48 and 112–116).)
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ANALYSIS
Rueger ’609 discloses interference pigments based on flake-form
substrates, which comprise (A) a layer of SiO2, (B) a high-refractive-index
coating having a refractive index n of >1.8 and/or (C) an interference system
consisting of alternating high- and low-refractive-index layers and,
optionally, (D) an outer protective layer (FF 3; see also App. Br. 3). Rueger
’609 discloses that layer (B) may consist of two layers (FF 5; see also App.
Br. 3–4). Rueger ’609 discloses that “[t]he term high-refractive-index
coatings is taken to mean layers having a refractive index of >1.8, and the
term low-refractive-index layers is taken to mean those having n[≤]1.8” (FF
6). Rueger ’609 discloses that layer (B), and the high-refractive-index (C)
layer, may be, inter alia, TiO2 or ZrO2 (FF 4 and 8). Rueger ’609 discloses
that colourless high-refractive-index layers (B) and/or (C), such as TiO2 and
ZrO2, may be coloured (FF 9). Rueger ’609 further discloses that the (C)
layer may consist of seven layers (FF 7; see also App. Br. 4). In sum,
Rueger ’609 makes obvious pigments comprising:
A Substrate with
(A) a layer comprising SiO2;
(B) a colourless high-refractive-index B layer of, for example, TiO2
(first (B) layer);
(C) a colourless high-refractive-index B layer of, for example, ZrO2
(second (B) layer);
(D) a coloured high-refractive-index C layer of, for example,
coloured TiO2 (first (C) layer);
(E) a colourless low-refractive-index C layer (second (C) layer);
(F) a colourless high-refractive-index C layer of, for example, ZrO2
(third (C) layer);
(F’) a low-refractive-index C layer (fourth (C) layer);
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(G) a colourless high-refractive-index C layer of, for example, TiO2
(fifth (C) layer);
(G’) a low-refractive index C layer (sixth (C) layer);
(H) a coloured high-refractive-index C layer of, for example,
coloured ZrO2 (seventh (C) layer); and
(I) an outer protective layer D.
(see FF 1–10.) In this regard, we note that layers (F’) and (G’) included
above, are not excluded from the pigment set forth in Appellants’ claim 1,
which “comprises at least” the layers recited in claim 1. Thus, Rueger ’609
makes obvious Appellants’ claimed invention.
In addition, Rueger ’609 discloses that “[t]he hue of the interference
pigments can be varied in very broad limits through the different choice of
the coating amounts or the layer thicknesses resulting therefrom” (FF 13).
In this regard, Rueger ’609 discloses that “[l]ayer (A) has [a] thickness[] of
5-350 nm” and that “[t]he thickness of the high-refractive-index layers
depends on the desired interference colour,” wherein Rueger ’609 prefers
that layer (B) has a thickness of 60–300 nm and layer (C) has a thickness of
40–800 nm (Rueger ’609 ¶¶ 28, 34, and 38; see also id. at 76 (“[t]he hue of
the interference pigments can be varied in very broad limits through the
different choice of the coating amounts or the layer thicknesses resulting
therefrom.”) (FF 13)).

Claim 1:
Appellants’ claim 1 is reproduced above.
For the foregoing reasons, we find no error in Examiner’s conclusion
that, at the time of Appellants’ claimed invention, a person of ordinary skill
in the art would have found Appellants’ claim 1 prima facie obvious over the
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combination of Rueger ’609, Wilhelm, Pfaff, and Schmidt (see Final Act.
11).
For the foregoing reasons, we are not persuaded by Appellants’
contention that
[g]iven all the possible combinations of high and low refractive
index and coloured or colourless layers among 7 or 8 layers, it
would not be possible for one of ordinary skill in the art to
arrive at the specific order for the layers as set forth in the
claims with the particular combination and ordering of
refractive index and colour/colourless properties.
(App. Br. 5; see also id. at 10–12; see also Reply Br. 2–4.) “[W]here[, as
here,] the general conditions of a claim are disclosed in the prior art, it is not
inventive to discover the optimum or workable ranges by routine
experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955); see also
Merck & Co. Inc. v. Biocraft Laboratories, Inc., 874 F.2d 804, 807 (Fed.
Cir. 1989) (“Disclos[ure of] a multitude of effective combinations does not
render any particular formulation less obvious.”).
For the foregoing reasons, we are not persuaded by Appellants’
contention that Examiner’s rejection is based on improper hindsight (see
App. Br. 9 (“[A]ppellants’ own teachings are being relied upon to
reconstruct the particular sequence as claimed.”); see also Reply Br. 5).
For the same reasons, we are not persuaded by Appellants’ contention
that Rueger ’609 differs from Appellants’ claimed invention because
“Rueger [’609], at most, teaches only two such different high refractive
index layers in succession, i.e., the Rueger [’609] embodiment (B)” (App.
Br. 4–5).

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For the foregoing reasons, we are not persuaded by Appellants’
contention that
Rueger [’609] differs from the claimed invention in that it fails
to disclose or suggest an embodiment having . . . at least the 7
layers, (A)-(D) and (F)-(H), recited in [Appellants’] claims on
appeal where each of the layers (B)-(D) and (F)-(H) are
different high refractive index layers, and optionally a further
layer (E), as recited in [Appellants’] claim 1.
(App. Br. 4; see also id. at 8–10.) Appellants’ claim 1 does not exclude a
pigment that comprises alternating high-refractive-index and low-refractive-
index layers (see App. Br. 19). For the same reasons, we are not persuaded
by Appellants’ contention that “Rueger [’609] directs away from arriving at
an order of layers as set forth in the claims because it requires that -- when
there are this many layers - - the arrangement includes a significant set of
layers alternating between high and low refractive index” (App. Br. 6; see
also id. at 9 (“Appellants do not dispute that Rueger [’609] suggests multiple
repeating layers of alternating high and low refractive index. But such a
pattern does not result in or suggest the claimed invention”)).
Therefore, we are not persuaded by Appellants’ contention that
Rueger [’609] significantly differs from the claimed invention
in that when Rueger [’609] generically teaches the use of the
interference system with up to 7 layers in addition to the first
SiO2 layer (a), it teaches that such layers alternate between high
refractive index layers (n>1.8) and low refractive index layers
(n<1.8).
(Id. at 4.) We are also not persuaded by Appellants’ contention that their
claim 1 excludes low-refractive-index layers intervening between high-
refractive index layers (see id. (“In [Appellants’] . . . claim 1, the layers (B)
thru (H) do not alternate between high and low refractive index layers”); see
also id. at 5 (Appellants’ contend that their “claim 1 . . . [requires a] specific
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order of high and low refractive index layers which are not alternating”)).
Initially, we note that Appellants’ use of the transitional phrase
“comprising,” as it appears in Appellants’ claim 1, permits intervening
layers of high- or low-refractive-index between each layer recited in
Appellants’ claim 1 (see id. at 19). In this regard, we note, for example, that
Appellants’ claim 4 depends from Appellants’ claim 1 and further requires a
low-refractive-index layer (A1) between layer (A) and (B). Because 35
U.S.C. § 112, ¶ 4, requires that “[a] claim in dependent form shall contain a
reference to a claim previously set forth and then specify a further limitation
of the subject matter claimed,” Appellants’ claim 4 establishes that
Appellants’ claim 1 permits layers intervening between those expressly
recited in Appellants’ claim 1 (see App. Br. 19–20; see also Reply Br. 2
(Appellants do not dispute the foregoing interpretation of Appellants’ claim
1)). Therefore, although we recognize Appellants’ contentions regarding
alternating layers (see e.g., Reply Br. 1–2), we find them unpersuasive.
For the reasons set forth above, Rueger ’609 suggests a pigment
within the scope of Appellants’ claim 1. Therefore, we are not persuaded by
Appellants’ contention that “[i]f [Appellants’] claimed structure had low
refractive index layers between each high refractive index layer, it would
contain 12 layers” and “[s]uch a structure is not suggested by Rueger [’609]”
(Reply Br. 2).
Because Rueger ’609 makes obvious Appellants’ claimed invention
we are not persuaded by Appellants’ contentions that Wilhelm, Pfaff, and
Schmidt do not make up for Appellants’ alleged deficiency in Rueger ’609
(see App. Br. 6–7). In affirming an obviousness rejection, the Board may
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rely upon less than all the references cited by the Examiner. See In re
Kronig, 539 F.2d 1300, 1302 (CCPA 1976).
For the reasons set forth above, we find that Rueger ’609 makes
obvious Appellants’ claimed invention. In this regard, Rueger ’609 explains
how the different layers of the pigment interact and why they are “of
particular interest for automotive paints, counterfeiting-proof securities and
in decorative cosmetics” (FF 11). Therefore, we are not persuaded by
Appellants’ contention that Ruger ’609 does not provide a person of
ordinary skill in this art with a reasonable expectation of successfully
preparing pigments within the scope of Appellants’ claimed invention (see
App. Br. 7–8; see also Reply Br. 4).
“Appellants confirm that no comparative evidence was provided” on
this record and that they “are not arguing unexpected results” (Reply Br. 4–
5). Therefore, we are not persuaded by Appellants’ contention that their
claimed pigment has “advantageous properties obtained by [A]ppellants’ . . .
claimed structure” (id.). As Appellants concede, the record lacks an
evidentiary basis to support this contention (see id.).

Claim 17:
Appellants’ claim 17 is reproduced above.
As discussed above, Rueger ’609 makes obvious pigments within the
scope of Appellants’ claimed invention comprising: A substrate coated with
(A) a layer comprising SiO2; (B)–(C) two layers of a high-refractive-index B
layer; (D)–(H) seven layers of alternating high- and low-refractive-index C
layers; and (I) an outer protective layer D (see FF 1–10).
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In addition, Rueger ’609 discloses that, inter alia, the layer
thicknesses may be varied in order to achieve a desired hue (FF 13). In this
regard, Rueger ’609 provides preferred thicknesses for its different layers,
wherein the SiO2, layer (A), has a thickness of 5–350 nm; layer (B) has a
thickness of 60–300 nm and layer (C) has a thickness of 40–800 nm (id.),
but does not limit the thicknesses to being within these preferred ranges.
Thus, Rueger ’609 makes obvious a pigment within the scope of Appellants’
claim 17. See In re Aller, 220 F.2d at 456 (“[W]here[, as here,] the general
conditions of a claim are disclosed in the prior art, it is not inventive to
discover the optimum or workable ranges by routine experimentation.”).
For the foregoing reasons, we are not persuaded by Appellants’
contention that Examiner “points to no teachings which direct one of
ordinary skill in the art to use the specific combinations of layer thicknesses
in the specific 7 or 8 layer arrangement as claimed” (App. Br. 13; see also
Reply Br. 5–6).
Appellants further contend that “even the broad range of 60 to 300 nm
for the high refractive layer in Rueger [‘609] does not overlap with the
thicknesses recited for the 1-50nm high refractive layers (B) and (F) in the
claims” (App. Br. 13). We are not persuaded. As discussed above,
Appellants’ layer (F) is accounted for by one of the seven (C) layers
described by Rueger ’609. Rueger ’609 discloses that its layer (C) has a
thickness of 40–800 nm, which overlaps the 1–50 nm thickness required for
Appellants’ layer (F). Overlapping ranges support a prima facie case of
obviousness. See In re Geisler, 116 F.3d 1465, 1468 (Fed. Cir. 1997).
Further, although Rueger ’609 prefers a thickness of 60–300 nm for
its layer (B), which corresponds to Appellants’ layer (B), Rueger ’609
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expressly states that the thicknesses of the layers may be varied, i.e.
optimized, in order to obtain a desired result (FF 13). See In re Geisler, 116
F.3d 1465, 1470, (Fed. Cir. 1997) (“‘[I]t is not inventive to discover the
optimum or workable ranges by routine experimentation.’”) (quoting In re
Aller, 220 F.2d 454, 456 (CCPA 1955)). Therefore, we are not persuaded by
Appellants’ contention that Rueger ’609 does not make obvious the
thickness of Appellants’ layer (B), which Rueger ’609 suggests can be
optimized through routine experimentation to obtain a desired result (see
App. Br. 13; see also Reply Br. 5–6; cf. FF 13).
For the foregoing reasons, we are not persuaded by Appellants’
contention that Rueger ’609 “teaches away from optimizing in a way which
would result in the thickness recited in the instant claims,” because it
discloses a preferred thickness of 60–300 nm for its layer (B) (App. Br. 13
(emphasis omitted)). A reference disclosure is not limited only to its
preferred embodiments, but is available for all that it discloses and suggests
to one of ordinary skill in the art. In re Lamberti, 545 F.2d 747, 750 (CCPA
1976).
For the reasons set forth above with respect to Appellants’ claim 1, we
are not persuaded by Appellants’ contentions that Rueger ’609 does not
make obvious a pigment within the scope of Appellants’ claimed invention
(see App. Br. 13).
CONCLUSION
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness. The rejection of claim 1 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Rueger ’609, Wilhelm,
Pfaff, and Schmidt is affirmed. Claims 4–16 and 23 are not separately
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argued and fall with claim 1. Claims 18–22 and 24 are not separately argued
and fall with claim 17.
Because our reasoning differs from Examiner’s, we designate this
affirmance a New Ground of Rejection.

Obviousness-type Double Patenting:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness-type double patenting?
ANALYSIS
The rejection over the claims of Rueger ’901, in combination with Wilhelm,
Pfaff, and Schmidt:
Based on the combination of Rueger ’901, in combination with
Wilhelm, Pfaff, and Schmidt, Examiner concludes that “ [Appellants’]
rejected claims are an obvious variant of the claims of [Rueger ’901]
because the claims of [Rueger ’901] include all the same critical features of
the rejected claims and the prior art clearly suggest the missing features”
(Final Act. 22). We are not persuaded.
Rueger ’901 claims:
1. Interference pigments based on coated flake-form substrates,
comprising a substrate coated with
(A) a first layer on said substrate of SiO2 having a layer
thickness of 5-350 nm, followed by
(B) a high-refractive-index coating having a refractive index n
of > 1.8, that consists of TiO2, Fe2O3, Fe3O4, Cr2O3, or titanium
suboxides
and/or
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(C) an interference system consisting of alternating high- and
low-refractive-index layers, said high index layers being those
of (B),
and optionally thereon
(C1) a semi-transparent metal layer, and/or
(D) an outer protective layer,
wherein the flake-form substrates are flake-form [aluminum]
oxide or glass flakes.
(Rueger ’901 16: 25–40; see Final Act. 21.)
On this record, Examiner failed to identify a disclosure in the claims
of Rueger ’901, in combination with Wilhelm, Pfaff, and Schmidt that
suggests layers (D) and (H) of Appellants’ claim 1, which requires “a
coloured coating having a refractive index n ≥ 1.8” (see App. Br. 19; see
generally App. Br. 13 (“the Rueger [’901], Wilhelm, Pfaff and Schmidt
references considered as a whole do not give one of ordinary skill in the art a
reason to arrive at a pigment as claimed [having] . . . a particular coloured or
colourless property in a particular order”); cf. Final Act. 21–22; Ans. 17–19).
See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“rejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.”).
Appellants’ claims 4–24 either depend from Appellants’ claim 1, or
require the subject matter set forth in Appellants’ claim 1, thus the rejection
of these claims suffers the same deficiency as set forth above. (see App. Br.
19–23).

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The rejection over the claims of Handrosch ’211, in combination with
Rueger ’609, Wilhelm, Pfaff, and Schmidt:
Based on the combination of Handrosch ’211, in combination with
Rueger ’609, Wilhelm, Pfaff, and Schmidt, Examiner concludes that “
[Appellants’] rejected claims are an obvious variant of the claims of
[Handrosch ’211] because the claims of [Handrosch ’211] include all the
same critical features of the rejected claims and the prior art clearly suggest
the missing features” (Final Act. 22). We are not persuaded.
Handrosch ’211 discloses:
1. Pearlescent pigments based on a flake-form substrate which
have the following layer sequence:
substrate+SiO2+TiO2+FeOOH,
substrate+SiO2+TiO2+SiO2+FeOOH,
substrate+SiO2+FeOOH+TiO2,
substrate+SiO2+TiO2+SiO2+TiO2+FeOOH,
substrate+SiO2+TiO2+SiO2+TiO2+SiO2+FeOOH,
substrate+SiO2+FeOOH+SiO2+TiO2,
substrate+SiO2+FeOOH+SiO2+TiO2+SiO2+TiO2,
substrate+SiO2+FeOOH+TiO2+SiO2+TiO2,
substrate+TiO2+SiO2+FeOOH,
substrate+TiO2+SiO2+TiO2+ FeOOH,
substrate+TiO2+SiO2+TiO2+SiO2+ FeOOH,
substrate+FeOOH+SiO2+TiO2,
substrate+FeOOH+SiO2+TiO2+SiO2+TiO2, or
substrate+FeOOH+TiO2+SiO2+TiO2,
and optionally a colourless coating comprising one or more
layers having a refractive index of <1.8.
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(Handrosch ’211 13: 20–38; see id. 3: 1–5 (Handrosch ’211 discloses that
“SiO2, Al2O3, AlO(OH), B2O3, MgF2, MgSiO3 or a mixture of said
compounds” are “colourless, low-refractive-index material[s]”).)
Examiner failed to establish an evidentiary basis on the record to
support a conclusion that the claims of Handrosch ’211 make obvious
Appellants’ claimed invention, or that any of Rueger ’609, Wilhelm, Pfaff,
and Schmidt, alone or in combination, suggest modifying the specific layer
sequences of the pearlescent pigments set forth in Handrosch ’211’s claims
to arrive at Appellants’ claimed invention (see Final Act. 23–25; Ans. 19–
20). In re Kahn, 441 F.3d at 988 (“rejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.”).
CONCLUSION
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness-type double patenting.
The rejection of claims 1 and 4–24 under the judicially created
doctrine of obviousness-type double patenting as being unpatentable over
the claims of Rueger ’901, in combination with Wilhelm, Pfaff, and Schmidt
is reversed.
The rejection of claims 1 and 4–24 under the judicially created
doctrine of obviousness-type double patenting as being unpatentable over
the claims of Handrosch ’211, in combination with Rueger ’609, Wilhelm,
Pfaff, and Schmidt is reversed.

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TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37
C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
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; 37 C.F.R. § 41.50(b)