Ex Parte Bujard et al

Patent Trial and Appeal BoardApr 1, 2016

12668028 (P.T.A.B. Apr. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/668,028 04/21/2010 94799 7590 04/05/2016 Law Office of Shrnti Costales, PLLC 2020 Pennsylvania A venue NW #310 Washington, DC 20006 FIRST NAMED INVENTOR Patrice Bujard 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. SE/2-23767/A/PCT 3182 EXAMINER WESTERBERG, NISSA M ART UNIT PAPER NUMBER 1618 NOTIFICATION DATE DELIVERY MODE 04/05/2016 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): shrnti@shrntilaw.com info@shrntilaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PATRICE BUJARD, PHILIPPE BUGNON, and MARC BA YSANG Appeal2014-000427 Application 12/668,028 1 Technology Center 1600 Before ERIC B. GRIMES, ULRIKE W. JENKS, and RYAN H. FLAX, Administrative Patent Judges. FLAX, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. Â§ 134(a) involving claims directed to a pigment comprising perlite having a plate-like structure. The Examiner rejects claims 1-9 and 11-21 as obvious and for obviousness- type double patenting. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. 1 According to Appellants, the real party in interest is Ciba Corporation of Tarrytown, NY. (Br. 3). Appeal2014-00427 Application 12/668,028 STATEMENT OF THE CASE Claims 1-9 and 11-21 are on appeal. Claim 1 is the sole independent claim, is representative of the claims on appeal, and reads as follows: 1. A pigment, comprising a core of perlite, having two substantially parallel faces, the distance between which is the shortest axis of the core, and (a) a layer of a metal oxide, having a high index of refraction; and/or (a) a semi-transparent metal layer with a thickness of between 5 and 25 nm. (Br. 14, Claims Appendix). Appellants submit that, with regard to the rejections over the prior art, the present appeal should "stand or fall on the basis of independent claim l." (Id. at 6). With regard to the double patenting rejections, Appellants do not separately argue the claims. (Id. at 12-13.) Thus, the claims stand or fall with claim 1. Appellants request review of the following grounds of rejection: A. Claims 1-6, 8, 9, 11-19, and 21 rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Bujard2 in view of Kishimoto3 and further in view of Cherepanina. 4 2 Bujard et al., WO 2006/131472 A2, published Dec. 14, 2006 (hereinafter "Bujard"). 3 Kishimoto et al., EP 1 548 071 Al, published June 29, 2005 (hereinafter "Kishimoto"). 4 L.I. Cherepanina, The Use of Perlite in Ceramic Colors, 22 Glass and Ceramics 371-372 (1965)(translated from Steklo i Kermika). 2 Appeal2014-00427 Application 12/668,028 B. Claims 7 and 20 rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Bujard, Kishimoto, and, optionally, Cherepanina, and further in view of Bujard '379. 5 C. Claims 1-9 and 11-21 provisionally rejected under the judicially created doctrine of obviousness-type double patenting over claims 1, 3-5, 7-9, 11, 15, 16, and 18-20 ofcopendingU.S. Patent Application No. 11/922,061 (hereinafter "Bujard '061 ")6 in view of Bujard and Kishimoto. D. Claims 1-9 and 11-21 rejected under the judicially created doctrine of obviousness-type double patenting over claims 1-15 of copending U.S. Patent Application No. 13/133,745 (hereinafter "Bujard '717"). 7 E. Claims 1-9 and 11-21 provisionally rejected under the judicially created doctrine of obviousness-type double patenting over claims 1-9 and 11-17 of copending U.S. Patent Application No. 12/739,421 (hereinafter "Bujard '421"). 8 5 Bujard, WO 2007/054379 Al, published May 18, 2007. 6 In this decision, when referring to the disclosure ofBujard '061 we refer to Pub. No. US 2009/0311209 Al, published Dec. 17, 2009. 7 U.S. Patent Application No. 13/133,745 issued as U.S. Patent 8,771,717 B2 on July 8, 2014. 8 The '421 application was abandoned on October 7, 2013, for Appellants' failure to pay the issue fee and publication fee. The provisional rejection based on the '421 application is therefore moot. 3 Appeal2014-00427 Application 12/668,028 F. Claims 1-9 and 11-21 rejected under the judicially created doctrine of obviousness-type double patenting over claims 1-9 and 11-17 of copending U.S. Patent Application No. 12/990,813 (hereinafter "Bugnon). 9 FINDINGS OF FACT FFl. The Specification10 discloses that the invention's "metal and/or metal oxide coated perlite flakes can be ... treated with a plasma torch" via the process disclosed by WO 06/131472, i.e., Bujard, to "promote[] ... uniform crystallinity and/or coating densification." (Spec. ,-i,-i 13-14). FF2. Bujard discloses that the particles of its disclosed process can "have any form," but are preferably "platelets (flakes)." (Bujard 2, 11. 17-18). FF3. Bujard discloses that "[s]uitable substrates which can be used as [the] base material [of its disclosed plasma torch process]" can include a variety of materials, including "[p ]articularly preferred [] mica, Si02 flakes, Ab03 flakes, Ti02 flakes, Fe203 flakes, BiOCl and glass flakes." (Id. at 2, 11. 22-36). FF4. The Specification discloses that Ti02 is a preferred material for the invention's recited "layer of metal oxide, having a high 9 U.S. Patent Application No. 12/990,813 issued as U.S. Patent 8,772,371 B2 on July 8, 2014. 10 In this decision "the Specification" or "Spec" refers to the disclosure of the application Pub. No. US 2010/0203093 Al, published Aug. 12, 2010. 4 Appeal2014-00427 Application 12/668,028 index of refraction," and layers of Ti02 can be formed via a process disclosed by WO 06/131472, i.e., Bujard. (Spec. ,-i 44--45). FF5. Bujard discloses that"[ e ]specially preferred pigments" of its disclosed processes include "Mica+ Ti02." (Bujard 12, 11. 21-23). FF6. Bujard discloses that its subject-particles are "plate-like particles (flakes, parallel structures) ... having two substantially parallel faces, the distance between which is the shortest axis of the core." (Id. at 15, 11. 31-34). FF7. The Specification indicates that "[p ]erlite is a hydrated natural glass." (Spec. ,-i 64 ). FF8. Bujard discloses that its disclosed process can utilize "transparent platelet-like substrates, such as for example, mica or glass." (Bujard 16, 11. 24). FF9. Bujard discloses that the particles obtained by the process likewise disclosed therein can be incorporated into coatings, paints, inks, and other materials and products. (Id. at 31, 11. 26-27). FFlO. Kishimoto discloses an optically coherent multilayered film-coated powder and method( s) of forming a "film-coated powder having ... a clear intended color;" which is understood to mean pigment. (Kishimoto Abstract; ,-i 7 5). FFl 1. Kishimoto discloses a variety of materials from which base particles for its disclosed pigment material and manufacturing process can be selected, including perlite and micas. (Id. at ,-i,-i 30-32). 5 Appeal2014-00427 Application 12/668,028 FF12. Cherepanina discloses that perlite, a natural volcanic glass, can be used in the manufacture of pigment, e.g., colors with low content of lead. (Cherepanina 371). DISCUSSION A. Rejection of claims 1-6, 8, 9, 11-19, and 21under35 U.S.C. Â§ 103(a) as unpatentable over Bujard, Kishimoto, and Cherepanina. Appellants argue that mica particles would not have been understood by the person of ordinary skill in the art at the time of the invention to be interchangeable or substitutable with perlite for use in a pigment as claimed (as exemplified by independent claim 1 ). We are not persuaded by Appellants' contentions. The Examiner finds Bujard disclosed (e.g., 2, 11. 22-36) the use of a substantial range of suitable base materials, specifically including mica, that can be coated in the fashion of the appealed claims to produce a pigment. 11 (See Final Action 4; Ans. 2-5). The Examiner finds that Kishimoto similarly disclosed (at paragraphs 12 and 30-32) a range of suitable base materials, including mica and perlite, which can be coated to produce pigment. 12 (See Final Action 4; Ans. 3--4). Appellants do not dispute the 11 The appealed application itself also discloses (Spec. ,-i 2) "[i]nterference pigments having a core consisting of a transparent carrier material, such as, for example, natural, or synthetic mica, Si02, or glass, are known." This is noteworthy because it illustrates Appellants' understanding that the materials mica and glass were known, suitable and substitutable materials for pigment substrates. 12 Moreover, Cherepanina (also cited by the Examiner in rejecting the appealed claims) discloses (at 3 71) that per lite, a natural volcanic glass, can be used in the manufacture of pigment, e.g., colors with low content of lead. 6 Appeal2014-00427 Application 12/668,028 appropriateness of this combination, but argue that the Examiner's reasoning was not clear and detailed. We disagree. The Examiner determined that each of Bujard and Kishimoto are directed to pigments, including mica and, in Kishimoto' s case, perlite, among a list of other, substitutable materials for substrates. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). We agree with the Examiner's conclusion that, based on the combined teachings of these references, it would have been obvious "to use perlite in place of the materials such as mica as the base material in the coated flakes taught by Bujard." (Ans. 4). In addition, the Examiner finds that Bujard disclosed (at 14, 18, and 20) a layer of metal oxide (e.g., Ti02) having a high refractive index (e.g., greater than about 1.65), coated over the particle substrate. (Ans. 3). This reads on the respective claim limitation. Appellants do not dispute this. Further, the Examiner determined Bujard disclosed (at 2, 11. 18-20) that the particles of its process can have any form, with any high aspect ratio materials such as platelets (flakes), rod-like materials and fibers being preferred. (See Ans. 2). We agree. Bujard states that its particles can be "plate-like particles (flakes, parallel structures) ... having two substantially Both Kishimoto and Cherepanina support the Examiner's position that the materials mica and perlite are interchangeable for use in pigments. 7 Appeal2014-00427 Application 12/668,028 parallel faces, the distance between which is the shortest axis of the core." (FF6.) Appellants do not argue any other claim limitations. 13 For these reasons, we affirm the obviousness rejection of claim 1. Appellants do not separately argue dependent claims 2-6, 8, 9, 11-19, and 21. (Br. 6). Therefore, these claims fall with claim 1. 3 7 C.F .R. Â§ 41.37(c)(l)(iv). B. Rejection of claims 7 and 20 under 35 U.S.C. Â§ 103(a) as unpatentable over Bujard, Kishimoto, (optionally) Cherepanina, and Bujard '379. On appeal, Appellants do not argue the rejection of claims 7 and 20 independently of claim 1 (or at all). For the reasons set forth above regarding the rejection of claims 1-6, 8, 9, 11-19, and 21, the respective rejection of claims 7 and 20 under 35 U.S.C. Â§ 103(a) is also affirmed. 13 Appellants argue that the perlite recited by claim 1 has advantages over mica when used as pigment (see, e.g., Br. 7), however no such characteristics are recited by the appealed claims. It is well established that limitations not appearing in the claims cannot be relied upon for patentability. In re Self, 671F.2d1344, 1348 (CCPA 1982). 8 Appeal2014-00427 Application 12/668,028 C. Provisional rejection of claims 1-9 and 11-21 under the judicially created doctrine of obviousness-type double patenting over claims 1, 3-5, 7-9, 11, 15, 16, and 18-20 ofBujard '061 in view of Bujard and Kishimoto. The co-pending claims of Bujard '061 were last presented in prosecution, as amended, on November 12, 2015. These claims were finally rejected on February 25, 2016. Current claim 1 of Bujard '061 recites: 1. (Currently Amended) A pigment, comprising a plate-like substrate of glass having an average thickness of from < 1 Âµm, and (a) a dielectric material, having a high index of refraction greater than 1.65; or (a) a thin semi-transparent metal layer, wherein the glass substrate consists ofECR glass having> 0.1 % Ti02, and has a defined thickness in the range ofÂ± 40% of the average thickness, wherein the pigment has a length of from 2 Âµm to 5 mm, a width of from 2 Âµm to 2 mm, and a ratio of length to thickness of at least 5: 1, and wherein the ECR glass comprises Si02 (63-70%), Ab03 (3-6%), Cao (4-7%), MgO (1-4%), B203 (2-5%), Na20 (9-12%), K20 (0- 3%), Ti02 (>0.1-4%), and ZnO (1-5%). The Appellants argue that synthetic glass flakes (as per Bujard '061) are significantly different from perlite (per the appealed claims) such that the subject matter of the appealed claims would not have been obvious over the Bujard '061 claims. We disagree. The above-discussed portions of the Bujard and Kishimoto references illustrate that glass is a suitable substrate 9 Appeal2014-00427 Application 12/668,028 for pigment and that it is interchangeable or substitutable with mica or perlite. 14 (See FF3, FFl 1, Final Action 4). Therefore, the subject matter of appealed claim 1 would have been obvious to a person of ordinary skill in the art over the identified claims of Bujard '061. For these reasons, the respective rejection of claims 1-9 and 11-21 under the judicially created doctrine of obviousness-type double patenting is affirmed. D. Rejection of claims 1-9 and 11-21 under the judicially created doctrine of obviousness-type double patenting over claims 1-15 of Bujard '717. U.S. Patent Application No. 13/133,745 issued as Bujard '717 on July 8, 2014. Claim 1 of Bujard '717 recites as follows: 1. A pigment, comprising a plate-like substrate of perlite, and (a) a layer of a dielectric material and/or (a') a metal layer, 14 The appealed application itself discloses (Spec. iJ 2) that "[i]nterference pigments having a core consisting of a transparent carrier material, such as, for example, natural, or synthetic mica, Si02, or glass, are known." This is noteworthy in that the Appellants have acknowledged that mica and glass are well known substitutes for one another in pigments. Moreover, Bujard '061 discloses (at 3, 11. 1-3) that "[g]lass flakes for the purpose of [its] invention include any of the known grades such as A-glass, E-glass (high resistivity makes E-glass suitable for electrical laminates), C-glass and ECR- glass (corrosion grade glass) materials." This is noteworthy in that the glass recited by Bujard '061 was well known. 10 Appeal2014-00427 Application 12/668,028 wherein said plate-like substrate of perlite does not contain 3D twin structure particles in an amount of greater than 5% by weight. The Appellants argue that the claims of Bujard '717 do not recite perlite "having two substantially parallel faces, the distance between which is the shortest axis of the core," as recited by appealed claim 1. This argument is not persuasive. The claims of Bujard '717 (e.g., claim 1, reproduced above) recite "a plate-like substrate ofperlite." Thus, the subject matter of appealed claim 1 would have been obvious to a person of ordinary skill in the art over the identified claims of Bujard '717. For these reasons, the respective rejection of claims 1-9 and 11-21 under the judicially created doctrine of obviousness-type double patenting is affirmed. E. Provisional rejection of claims 1-9 and 11-21 under the judicially created doctrine of obviousness-type double patenting over claims 1-9 and 11-17 of Bujard '421. The Bujard '421 application was abandoned on October 7, 2013, for Appellants' failure to pay the issue fee and publication fee. For this reason, the respective rejection of claims 1-9 and 11-21 under the judicially created doctrine of obviousness-type double patenting is dismissed as moot. F. Rejection of claims 1-9 and 11-21 under the judicially created doctrine of obviousness-type double patenting over claims 1-9 and 11-17 of Bugnon. U.S. Patent Application No. 12/990,813 issued as Bugnon on July 8, 2014. Claim 1 of Bugnon recites as follows: 1. A pearlescent pigment comprising a platelet-shaped substrate, a metal oxide coating comprising: 11 Appeal2014-00427 Application 12/668,028 a metal oxide layer having a refractive index of greater than 1. 8; and a protective layer, wherein the protective layer comprises a metal oxide/hydroxide layer and optionally boroxide, applied to which is an organic aftercoat of an acrylic copolymer, wherein the metal oxide/hydroxide of the protective layer is selected from oxides/hydroxides of silicon (silicon oxide, silicon oxide hydrate), aluminium, zirconium, magnesium, calcium, iron(III), yttrium, cerium, zinc and combinations thereof, and wherein the acrylic copolymer comprises as copolymerized units the following monomers (A) an ethylenically unsaturated monomer containing at least one ammo group; (B) an ethylenically unsaturated monomer containing no amino group; (C) optionally a hydroxy- or alkoxyalkyl(meth)acrylate of the formula CH2 = CH(R1)-COO-(C1H2t)-OR2 (D) a (poly)alkyleneglycolmono(meth)acrylate of the formula CH2 = CH(R1)-COO-(CmH2mO)-OR2 wherein R1 is hydrogen or methyl and R2 is hydrogen or C1- C6alkyl, tis an integer of 2, 3, 4, 5 or 6; and mis an integer of 2 or 3 and n is an intekger [sic] of 2 to 20. The Appellants argue that the claims of Bugnon, like those of Bujard '717, do not cover perlite "having two substantially parallel faces, the distance between which is the shortest axis of the core," as recited by appealed claim 1. This argument is not persuasive. The claims of Bugnon (e.g., claim 1, reproduced above) recite a "pearlescent pigment comprising a 12 Appeal2014-00427 Application 12/668,028 platelet-shaped substrate," and the substrate can be perlite (which is expressly recited in claim 4 of Bugnon). Thus, the subject matter of appealed claim 1 would have been obvious to a person of ordinary skill in the art over the identified claims of Bugnon. For these reasons, the respective rejection of claims 1-9 and 11-21 under the judicially created doctrine of obviousness-type double patenting is affirmed. SUMMARY The rejection of claim 1-6, 8, 9, 11-19, and 21under35 U.S.C. Â§ 103(a) as unpatentable over Bujard, Kishimoto, and Cherepanina is AFFIRMED. The rejection of claims 7 and 20 under 35 U.S.C. Â§ 103(a) as unpatentable over Bujard, Kishimoto, (optionally) Cherepanina, and Bujard '379 is AFFIRMED. The rejection of claims 1-9 and 11-21 under the judicially created doctrine of obviousness-type double patenting over claims 1, 3-5, 7-9, 11, 15, 16, and 18-20 ofBujard '061, in view ofBujard, and Kishimoto is AFFIRMED. The rejection of claims 1-9 and 11-21 under the judicially created doctrine of obviousness-type double patenting over claims 1-15 of Bujard '717 is AFFIRMED. The rejection of claims 1-9 and 11-21 under the judicially created doctrine of obviousness-type double patenting over claims 1-9 and 11-17 of Bujard '421 is DISMISSED. 13 Appeal2014-00427 Application 12/668,028 The rejection of claims 1-9 and 11-21 under the judicially created doctrine of obviousness-type double patenting over claims 1-9 and 11-17 of Bugnon is AFFIRMED. 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. Â§ l.136(a). AFFIRMED 14