Ex Parte Mennig et al

Patent Trial and Appeal BoardDec 27, 2017

12519102 (P.T.A.B. Dec. 27, 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. 12/519,102 08/21/2009 Martin Mennig 3672-P36671 1179 13897 7590 Abel Law Group, LLP 8911 N. Capital of Texas Hwy Bldg 4, Suite 4200 Austin, TX 78759 12/29/2017 EXAMINER EMPIE, NATHAN H ART UNIT PAPER NUMBER 1712 NOTIFICATION DATE DELIVERY MODE 12/29/2017 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): mail @ Abel-IP.com hmuensterer @ abel-ip. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARTIN MENNIG and HELMUT SCHMIDT1 Appeal 2017-002907 Application 12/519,102 Technology Center 1700 Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and N. WHITNEY WILSON, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON REHEARING Appellants timely request rehearing of our Decision affirming the Examiner’s rejections under 35 U.S.C. § 103(a) of claims 52—71. In their Appeal Brief, Appellants had argued that Leigeber’s examples show “multilayer structures are delaminated by milling” (App. Br. 12) and that Leigeber “thus provides a disincentive rather than an apparent reason for one of ordinary skill in the art to grind a multilayer structure such as an interference pigment” (id. at 13). We found this argument unpersuasive 1 EPG (Engineered Nanoproducts Germany) AG is identified as the real party in interest. Appeal Br. 3. Appeal 2017-002907 Application 12/519,102 stating “as correctly pointed out by the Examiner, Leigeber explicitly discloses producing ground or milled structures having multiple laminae bonded firmly together (Ans. 4 (citing, for example, Leigeber 146))” (Dec. 6). In the subject request, Appellants submit our Decision appears to have overlooked their Reply Brief response to the Examiner’s point wherein they had argued that paragraphs 44-47 of Leigeber refer to multiple laminae bonded firmly together which “clearly is not the case with interference pigments, and neither has the Examiner provided any evidence that interference pigments consist of layers which generally cannot be separated from each other even by milling” (Reply Br. 4) (Rehearing Request 2). Appellants reiterate this argument (id. at 2-4) and contend the evidence of record supports a determination that “there is at least a high likelihood that milling of an interference pigment will result in delamination of (significant damage to) the pigment particles” (id. at 4). Our consideration of Appellants’ argument at the time of our Decision failed to reveal harmful error in the Examiner’s § 103 rejections and continues to so fail upon reconsideration. As explained in the Decision, the record evidence including Appellants’ document-excerpts and the Examiner’s applied references merely suggest pigment damage may occur if milling parameters are excessive (Dec. | bridging 6—7). The Decision further explained that such evidence reinforces the Examiner’s obviousness conclusion (1) because it demonstrates that milling intensity is a result- effective variable to be optimized so as to obtain a desired size with minimal pigment damage and (2) because the applied reference to Reed teaches that 2 Appeal 2017-002907 Application 12/519,102 wet rotary ball milling provides reduced impact stress resulting in reduced particle damage (id.). For these reasons, we disagree with Appellants’ contention in the subject Request that the record evidence reflects milling of an interference pigment “will result in delamination of (significant damage to) the pigment particles” (Rehearing Request 4). Rather, we continue to interpret this evidence as supporting a conclusion that it would have been obvious to comminute interference pigment with a wet grinding process in view of Leigeber and Reed based upon a reasonable expectation of success. DECISION Appellants’ Request for Rehearing is denied with respect to changing our Decision affirming the Examiner’s § 103 rejections. DENIED 3