Ex Parte Craighead et al

Patent Trial and Appeal BoardMar 16, 2017

12994307 (P.T.A.B. Mar. 16, 2017)

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. 12/994,307 11/23/2010 Alan Craighead 16-834-WO-US 2117 141081 7590 03/17/2017 MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP/AkzoNobel 300 S. WACKER DRIVE 3 2ND FLOOR CHICAGO, IL 60606 EXAMINER PHILLIPS, RUFUS L ART UNIT PAPER NUMBER 2877 MAIL DATE DELIVERY MODE 03/17/2017 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALAN CRAIGHEAD, CLAUDE GRIFFITH, and SWIE LAN NJO Appeal 2016-001106 Application 12/994,307 Technology Center 2800 Before TERRY J. OWENS, ROMULO H. DELMENDO, and MICHAEL G. McMANUS, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellants claim a method for determining the color of a variant1 of a standard color of a repair paint which matches the color of an object to be repaired. Claim 1 is illustrative: 1 The Appellants state that “[cjolour variants are variants of the same standard colour of coated substrates, such as automobiles, which occur due to small variations in the process conditions, for example at different Appeal 2016-001106 Application 12/994,307 1. A method of determination of a matching variant of a standard color of a repair paint matching the effect color of an object to be repaired, the method comprising the steps of a) determination of the standard color of the color of the object to be repaired, and b) determination of the best matching variant of the standard color from a given number of variant colors, wherein • a swatch coated with the color of the standard color is visually compared under at least two different angles of illumination and/or observation with the color to be matched, • the visual deviation from the standard color and the color of the object to be matched being evaluated on the basis of predetermined deviations for the visual properties, wherein the predetermined visual properties comprise at least one color property and at least one texture property, • based on the predetermined deviations for the visual properties of the standard color and the color of the object to be matched, the best matching variant of the standard color is determined, and further comprising preparing a paint of the best matching color variant. manufacturing sites, or due to batch-to-batch variations of paints or the ingredients thereof’ (Spec. 1:5—8). Kettler Spitzer The References US 5,929,998 US 6,768,814 B1 July 27, 1999 July 27, 2004 2 Appeal 2016-001106 Application 12/994,307 The Rejections The claims stand rejected as follows: claims 1—4, 6—15 and 18 under 35 U.S.C. § 102(b) over Spitzer and claims 5, 16, 17, 19 and 20 under 35 U.S.C. § 103 over Spitzer in view of Kettler. OPINION We reverse the rejections. We need address only the sole independent claim, i.e., claim l.2 That claim requires visually comparing the standard color of a repair paint on a swatch to the color of an object to be repaired, and based upon visual property deviations of the standard color and the color of the object to be repaired, determining the best matching variant of the standard color. Spitzer repairs car paint by measuring the car’s color using an electronic imaging device, recording a panel on which different calibration colors have been applied, calculating colorimetric data of the car’s color, using software to generate the color formula which after application will have the color of the car to be repaired, and applying paint having that color formula to the car (col. 7,11. 30-38). The Examiner finds that Spitzer’s calibration colors are the standard color of the object to be repaired (Ans. 2). Spitzer’s calibration colors are not the standard color of the object to be repaired but, rather, are colors whose colorimetric data is used by 2 In the rejection under 35 U.S.C. § 103 the Examiner does not apply any obviousness rationale with respect to the independent claim’s limitations and does not rely upon Kettler for any disclosure that remedies the deficiency in Spitzer as to those limitations (Ans. 5—6). 3 Appeal 2016-001106 Application 12/994,307 software to generate a color formula which after application will have the color of the car to be repaired (col. 3,11. 35—46; col. 7,11. 33—37). Thus, the Examiner has not set forth a factual basis which is sufficient to support a prima facie case of obviousness of the Appellants’ claimed invention. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art”). Accordingly, we reverse the rejections. DECISION/ORDER The rejections of claims 1—4, 6—15 and 18 under 35 U.S.C. § 102(b) over Spitzer and claims 5, 16, 17, 19 and 20 under 35 U.S.C. § 103 over Spitzer in view of Kettler are reversed. It is ordered that the Examiner’s decision is reversed. REVERSED 4