Ex Parte Pilz et al

Patent Trials and Appeals BoardMar 20, 2019

14152138 - (D) (P.T.A.B. Mar. 20, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/152,138 01/10/2014 25297 7590 03/22/2019 Jenkins, Wilson, Taylor & Hunt, P.A. 3015 Carrington Mill Boulevard Suite 550 Morrisville, NC 27560 FIRST NAMED INVENTOR Manuela Pilz 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. 1406/908 CON 5563 EXAMINER MANGOHIG, THOMAS A ART UNIT PAPER NUMBER 1788 NOTIFICATION DATE DELIVERY MODE 03/22/2019 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): usptomail@jwth.com datcheson@jwth.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MANUELA PILZ and GUDRUN SCHUBERT Appeal2018-004526 1 Application 14/152,138 Technology Center 1700 Before JEFFREY T. SMITH, CHRISTOPHER C. KENNEDY, and DEBRA L. DENNETT, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL This is an Appeal under 35 U.S.C. Â§ 134 from a final rejection of claims 1-12. We have jurisdiction under 35 U.S.C. Â§ 6. We affirm. 1 Appellant and the real party in interest is Sigmund Lindner GmbH. (Br. 1.) Appeal2018-004526 Application 14/152,138 Appellant's invention is generally directed to glitter products that are physically and/or chemically resistant to impairment. (Spec. ,r 4.) Claim 1 illustrates the subject matter on appeal and is reproduced below: 1. A glitter product comprising a plurality of individual particles, which are not bonded together, each of the individual particles having a thickness of 2: 1 Âµm and each consisting of a carrier layer of a plastics foil which is provided on either side with a coating of aluminium and thereon with a coating of polyurethane or epoxide; provided with a coating of polyurethane or epoxide on either side; or provided with a coating of aluminium on either side, wherein each of the individual particles is provided on all sides with a homogeneous protective layer so as to enclose cut or broken edges on the individual particles. The Examiner maintains the following rejections from the Final Office Action for our review: I. Claims 1-7 and 10-12 rejected under 35 U.S.C. Â§ I03(a) as obvious over the combination of Craig (US 6,033,464; Mar. 7, 2000) and Ganapathiappan (US 2008/0257212 Al; Oct. 23, 2008). II. Claim 4 rejected under 35 U.S.C. Â§ I03(a) as obvious over the combination of Craig, Ganapathiappan, and Jungnitz (US 2005/0019575 Al; Jan. 27, 2005). III. Claims 8 and 9 rejected under 35 U.S.C. Â§ I03(a) as obvious over the combination of Craig, Ganapathiappan, and Schwab (CA 2,005,978; June 21, 1990). The complete statement of the rejections on appeal appear in the Final 2 Appeal2018-004526 Application 14/152,138 Office Action. (Final Act. 3-9.) OPINION Appellant presents substantive arguments addressing independent claim 1. (Br. 2-9.) Appellant contends separately rejected claims 4, 8, and 9 are patentable for the same reasons. (Br. 7.) We will address independent claim 1 as argued by Appellant. Any claim not separately argued will stand or fall with its independent claim 1. Having considered the respective positions advanced by the Examiner and Appellant in light of this appeal record, we affirm the Examiner's rejection for the reasons set forth in the Answer to the Appeal Brief and Final Office Action appealed from, which we adopt as our own. We highlight and address specific findings and arguments for emphasis as follows. Appellant argues none of the techniques described in the prior art references provide a glitter product in which each individual particle is protected on all sides with a homogenous protective layer so as to enclose cut or broken edges on the individual particles. (Br. 2.) In support of this argument, Appellant relies on two Declarations ( submitted July 6, 2015 and December 22, 2015) to establish "that the present glitter product is produced by a specific method in such a way that the glitters are in an individual form in the product and provided on all sides with a homogeneous protective layer." (Br. 3.) Appellant contends the Declarations establish the liquid phase process outlined in Taylor (US 2005/0250877 Al; Nov. 10, 2005) 3 Appeal2018-004526 Application 14/152,138 results in agglomerates of individual glitter particles that have to be dried after the coat. (Br. 3; Declaration filed July 6, 2015, ,r 5.) Appellant argues the Declarations provided in the present record are relevant to the present rejection because Ganapathiappan and Taylor both require dispersing the pigment particles in the aqueous liquid vehicle. (Br. 3.) Appellant further argues: When Ganapathiappan' s liquid dispersion is dried, one would expect that agglomerates will form that, as with Taylor's agglomerates or any other agglomerates, must be broken to produce particles that are not bonded together as the present claims require. However, breaking the agglomerates will damage the coating such that each individual particle is not provided on all sides with a homogeneous protective layer, as the present claims also require. (Br. 4.) Appellant argues the provided evidence (Declarations) that drying particles that are coated in an aqueous solution results in agglomeration and breaking the agglomerate into individual particles cannot be done without damaging the coating. (Br. 8.) Appellant argues the Examiner has not given proper weight to the Declarations which describe glitter produced using the process described in Taylor. Appellant's arguments are not persuasive of reversible error. We adopt the Examiner's responses to Appellant's arguments. The Examiner has provided an extensive discussion as to why the Declaration evidence relied upon was not sufficient to overcome the appealed rejections. (See Final Act.; Answer.) Appellant has not established that the processes of Ganapathiappan and Taylor are so similar that the coated particles formed, according to Ganapathiappan, would 4 Appeal2018-004526 Application 14/152,138 necessarily have the same characteristics as those of Taylor. Moreover, Ganapathiappan discloses that the process to coat the pigment particles includes deaggregating and dispersing the pigment particles using standard processes such as microfluidization, resulting in the produced particles that are individually coated. (Ganapathiappan ,r 26.) Appellant argues there was no motivation to modify the glitter within Craig's marking composites because there is no indication of any difficulty in incorporating any of the various known glitters. (Br. 5.) Appellant's argument is not persuasive of reversible error. Craig does not place a limit on the type of glitter utilized. (Craig col. 8.) Consequently, a person of ordinary skill in the art would have reasonably expected that the glitters described by Ganapathiappan would have been suitable for Craig's marking composition. See, e.g., KSR Int'! Co. v. Teleflex, Inc., 550 US 398, 416 (2007) ("when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result"); In re Siebentritt, 372 F.2d 566, 567-68 (CCPA 1967) (express suggestion to interchange methods which achieve the same or similar results is not necessary to establish obviousness); see also In re Kahn, 441 F.3d 977, 985- 88 (Fed. Cir. 2006); In re O'Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988) ("For obviousness underÂ§ 103, all that is required is a reasonable expectation of success." ( citations omitted)); In re Keller, 642 F.2d 413, 425 ( CCP A 19 81) (" [T]he test [ for obviousness] is what the combined teachings of the references would have suggested to those of ordinary skill in the art."). 5 Appeal2018-004526 Application 14/152,138 Consequently, after consideration of Appellant's arguments, we are unpersuaded of error in the Examiner's determination of obviousness. Accordingly, we affirm the 35 U.S.C. Â§ 103(a) rejections of claims 1- 12 for the reasons given above and presented by the Examiner. DECISION The Examiner's prior art rejections of claims 1-12 are affirmed. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l). AFFIRMED 6