Ex Parte Schaller et al

Patent Trial and Appeal Board

Mar 23, 2017

14301398 (P.T.A.B. Mar. 23, 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.
14/301,398 06/11/2014 Christian Marcus SCHALLER 32471/23406 6016
4743 7590 03/27/2017
MARSHALL, GERSTEIN & BORUN LLP
233 SOUTH WACKER DRIVE
6300 WILLIS TOWER
CHICAGO, IL 60606-6357
EXAMINER
MELLOTT, JAMES M
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
03/27/2017 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):
mgbdocket@marshallip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTIAN MARCUS SCHALLER and RAPHAEL MEYER1
Appeal 2016-005541
Application 14/301,398
Technology Center 1700
Before TERRY J. OWENS, JULIA HEANEY, and
JANE E. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1—4, 6—13, 15, and 16.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Appellants’ invention is generally directed to a method of protecting
cork or wood substrates from discoloration. Spec. 2,11. 4—5. Claim 1
illustrates the subject matter on appeal and is reproduced below:
1 Appellants identify the Real Party in Interest as Ciba Corp. Appeal Brief
filed September 28, 2015 (“App. Br.”), 3.
2 Claim 14 stands withdrawn from consideration. Final Office Action
entered May 4, 2015 (“Final Act”), 2.
Appeal 2016-005541
Application 14/301,398
1. A method for protecting cork or wood substrates from
discoloration
wherein the wood substrate is selected from the group
consisting of beech, alder, meranti, oak, cherry, teak, nut,
redwood, mahogany, eucalyptus, american beech, durian, red
cedar, leichhardt tree, champa, rubberwood, taiwan ash,
campher tree, zebra wood, makha, rosewood, rain tree and
ironwood;
comprising applying to the cork or wood substrate a
coating, which coating contains
a) an organic UV-absorber, wherein the organic UV-
absorber is a hydroxyphenyltriazine; and
b) an inorganic UV-absorber, wherein the inorganic UV-
absorber is carbon black or a mixture of carbon black and a
transparent iron oxide;
wherein the weight ratio of organic UV-absorber to
inorganic UV-absorber is from 1000:1 to 10:1.
App. Br. 30 (Claims Appendix).
Appellants request review of the following rejections maintained by
the Examiner in the Answer entered March 3, 2016 (“Ans.”), 2:
I. Claims 1—3, 6—13, 15, and 16 under 35 U.S.C. § 103(a) as
unpatentable over Peter (WO 2005/005114 Al, published January 30, 2005),
Ozai et al. (US 6,306,999 Bl, issued October 23, 2001; hereinafter “Ozai”),
and Maier et al. (US 2003/0162892 Al, published August 28, 2003;
hereinafter “Maier”).
II. Claims 1, 3, 4, 6—13, 15, and 16 under 35 U.S.C. § 103(a) as
unpatentable over Peter, Ozai, and Leiden et al. (US 6,645,588 Bl, issued
November 11, 2003; hereinafter “Leiden”).
DISCUSSION
Upon consideration of the evidence on this appeal record and each of
Appellants’ contentions, we affirm the Examiner’s rejection of claims 1—3,
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Application 14/301,398
6—13, 15, and 16 under 35 U.S.C. § 103(a) as unpatentable over Peter, Ozai,
and Maier, and affirm the Examiner’s rejection of claims 1, 3, 4, 6—13, 15,
and 16 under 35 U.S.C. § 103(a) as unpatentable over Peter, Ozai, and
Leiden.
We add the following discussion primarily for emphasis.
Appellants address Rejections I and II together, rather than providing
separate arguments for each rejection (App. Br. 9-27), and we therefore also
address both rejections together. In addition, although Appellants argue all
of the pending claims together as a group on the basis of independent claims
1 and 16, Appellants do not provide separate arguments for each of claims 1
and 16. Id. Therefore, we select claim 1 as representative, and claims 2—4,
6—13, 15, and 16 will stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv)
(2015).
Peter discloses a method of stabilizing or protecting wood against
damage caused by exposure to sunlight and heat that involves applying a
coating composition to the wood. Peter 1,11. 3—6. Peter discloses that the
coating composition comprises a binder and either a single transparent
inorganic pigment, such as transparent iron oxide, or a mixture of different
transparent inorganic pigments. Peter 18,11. 13—26. Peter discloses that the
total amount of transparent inorganic pigment in the coating composition is
from 0.01% to 5% by weight based on the weight of binder solids. Peter 18,
11. 25—26. Peter discloses that the coating composition may further comprise
one or more UV absorbers, and Peter discloses numerous exemplary,
suitable UV absorbers, including hydroxyphenyltriazines and
hydroxyphenylbenzotriazoles. Peter 19,1. 16—22,1. 12. Peter discloses that
the UV absorbers are preferably present in the coating composition in an
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Application 14/301,398
amount of 0.01% to 5% by weight based on the solids content of the
composition. Peter 25,11. 8—10. Peter exemplifies application of coating
compositions to fir. Peter 26,1. 17—29,1. 2.
Ozai discloses an organopolysiloxane composition suitable for coating
various substrates. Ozai col. 1,11. 6—10. Ozai discloses that the coating
composition can comprise one or more inorganic pigments, and discloses
that the “inorganic pigment may include carbon black and iron oxides.”
Ozai col. 6,11. 25—28, 45^49. Ozai further discloses that the composition
may include one or more ultraviolet light absorbers, and discloses that the
ultraviolet light absorber “may include carbon black and benzotriazole.”
Ozai col. 6,11. 25-29, 46-A9.
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of Appellants’ invention to substitute a
carbon black UV absorber as taught by Ozai for the benzotriazole UV
absorber taught by Peter because Ozai discloses that carbon black and
benzotriazole can be used interchangeably as UV absorbers in coating
compositions. Final Act. 5; Ans. 8—9.
Appellants argue that one of ordinary skill in the art would not have
had a reason to replace the benzotriazole UV absorber disclosed in Peter
with a carbon black UV absorber as disclosed in Ozai, as proposed by the
Examiner. App. Br. 15—25; Final Act. 5. Specifically, Appellants argue that
Peter is directed to protecting wood with a coating composition and
discloses an extensive list of UV absorbers suitable for use in the
composition. App. Br. 15—18. Appellants contend that one of ordinary skill
in the art would not have turned to Ozai to find a UV absorber to include in
Peter’s coating composition that differs from the UV absorbers that Peter
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Application 14/301,398
discloses because Ozai is unrelated to protecting wood and is directed to
organopolysiloxane compositions. App. Br. 17—21. Appellants further
contend that neither Peter nor Ozai teach or suggest that carbon black would
be suitable for use with a hydroxyphenyltriazine UV absorber. App. Br. 21.
However, as discussed above, Peter discloses a coating composition
for wood that comprises one or more inorganic pigments, such as iron oxide,
and can comprise one or more UV absorbers, such as hydroxyphenyltriazine
and hydroxyphenylbenzotriazole. Peter 18,11. 21—26; 19,11. 16—22; 21,1.
32. Ozai discloses a coating composition suitable for “various substrates”
that can comprise an inorganic pigment, and Ozai teaches that a combination
of carbon black and iron oxide can be used as the inorganic pigment. Ozai
col. 6,11. 25—28, 45^46. Ozai’s disclosure of including both carbon black
and iron oxide as an inorganic pigment in a coating composition for various
substrates reasonably would have suggested to one of ordinary skill in the art
at the time of Appellants’ invention that carbon black and iron oxide could
be successfully used in combination as the inorganic pigment in Peter’s
coating composition for wood comprising a hydroxyphenyltriazine UV
absorber, as recited in claim 1, in view of Peter’s disclosure that the
composition can include one or more inorganic pigments.
Moreover, Ozai further teaches that the coating composition disclosed
in the reference can comprise one or more UV absorbers, such as carbon
black and benzotriazole. Ozai col. 6,11. 25—29, 46-47. Peter similarly
teaches that the disclosed coating composition can comprise one or more UV
absorbers, and indicates that hydroxyphenyltriazines and
hydroxyphenylbenzotriazoles are exemplary, suitable UV absorbers. Peter
19,1. 16—22,1. 12. In view of Peter’s disclosure of a coating composition
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that may include one or more UV absorbers, Ozai’s disclosure of including a
combination of carbon black and benzotriazole UV absorbers in a coating
composition for various substrates reasonably would have suggested that a
combination of carbon black and one or more of the exemplary UV
absorbers disclosed in Peter, such as hydroxyphenylbenzotriazole and/or
hydroxyphenyltriazine, as recited in claim 1, could be successfully used in a
coating composition for wood.
Appellants’ arguments that Peter and Ozai do not teach or suggest that
carbon black would be suitable for use with a hydroxyphenyltriazine UV
absorber fail to consider Peter’s broad disclosure of a coating composition
that can include one or more UV absorbers, and Peter’s non-limiting
disclosure of suitable UV absorbers that are merely exemplary. Peter 19,1.
16—22,1. 12. Appellants’ arguments also fail to take into consideration
Ozai’s similarly broad disclosure of including one of more UV absorbers in
a coating composition, and Ozai’s non-limiting disclosure that the UV
absorber “may include” carbon black and benzotriazole. Ozai col. 6,11. 25—
29, 46-47. Appellants’ arguments do not identify any disclosure in either
Peter or Ozai, or any other evidence, demonstrating that carbon black and
hydroxyphenyltriazine could not have been successfully used in combination
in a coating composition. App. Br. 15—25. Appellants’ arguments are
therefore unpersuasive of reversible error.
Appellants further argue that Ozai is non-analogous art because one
skilled in the art desiring to protect wood from discoloration would not look
to Ozai because Ozai is directed to a curable organopolysiloxane for use on
rubber surfaces to provide tack-free properties, lubricity, and wear
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resistance. Rep. Br. 2—3; App. Br. 17—18. Appellants contend that none of
these features relate to wood discoloration. Id.
For a prior art reference to be analogous art, the reference must be in
the field of the inventors’ endeavor, or if it is not in the inventors’ field, the
reference must be reasonably pertinent to the particular problem with which
the inventors were concerned from the viewpoint of one of ordinary skill in
the art. In re Kahn, 441 F.3d 977, 986—87 (Fed. Cir. 2006) (stating that the
analogous art test requires that “a reference is either in the field of the
applicant’s endeavor or is reasonably pertinent to the problem with which
the inventor was concerned . . . based on the judgment of a person having
ordinary skill in the art.”)
As set forth above, claim 1 recites a method for protecting cork or
wood substrates from discoloration that comprises applying a coating to the
cork or wood. Ozai discloses a coating composition used to protect “various
substrates” from wear, and Ozai discloses that the coating composition can
include one or more inorganic pigments and UV absorbers. Ozai col. 1,11.
49-58; col. 6,11. 25—29. One of ordinary skill in the art seeking to produce a
coating composition to protect a substrate such as wood would have looked
to Ozai’s disclosure of useful ingredients for coating compositions that
protect various substrates, including useful inorganic pigments and UV
absorbers. Accordingly, one of ordinary skill in the art would have
understood Ozai to be reasonably pertinent to the particular problem with
which the inventors were concerned—methods for protecting cork or wood
substrates from discoloration with coating compositions. Appellants’
arguments are therefore unpersuasive of reversible error.
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Appellants further argue that Peter does not disclose or suggest the
weight ratio of organic UV absorber to inorganic UV absorber recited in
claim 1. App. Br. 11—15. Specifically, Appellants contend that because
Peter discloses that a UV absorber is an optional component of the coating
composition, and further discloses that both the inorganic pigment and
optional UV absorber are present in the composition in an amount of 0.01%
to 5% by weight, Peter would not have suggested including a UV absorber
in the coating composition in an amount that is 10 to 1000 fold greater than
the amount of the inorganic pigment. App. Br. 15. Appellants contend that
this lack of suggestion in Peter of the recited weight ratio is further
demonstrated by Peter’s experimental examples, which disclose coating
compositions in which the weight ratios of UV absorber to inorganic
pigment are outside the range recited in claim 1. App. Br. 14—15.
However, regardless of Peter’s non-limiting disclosure of exemplary
coating compositions in which the weight ratio of UV absorber to inorganic
pigment is outside the range recited in claim 1, Peter broadly discloses that
the total amount of inorganic pigment in the coating composition is 0.01% to
5% by weight, and discloses that the UV absorbers are preferably present in
an amount of 0.01% to 5% by weight. Peter 18,11. 25—26; 25,11. 8—10.
Peter therefore discloses that the weight ratio of UV absorbers to inorganic
pigment in the coating composition can range from 500:1 to 1:5003, which
overlaps the range recited in claim 1, rendering the recited range prima facie
3 A coating composition containing 5% UV absorber by weight and 0.01%
inorganic pigment by weight would have weight ratio of UV absorber to
inorganic pigment of 500:1, while a coating composition containing 0.01%
UV absorber by weight and 5% inorganic pigment by weight would have
weight ratio of UV absorber to inorganic pigment of 1:500.
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obvious. In re Peterson, 315 F.3d 1325, 1329-30 (Fed. Cir. 2003) (“In
cases involving overlapping ranges, we and our predecessor court have
consistently held that even a slight overlap in range establishes a prima facie
case of obviousness . . . .”).
Because Appellants do not provide evidence demonstrating the
criticality of the recited range (App. Br. 9-27), Appellants’ arguments are
unpersuasive of reversible error. In re Woodruff, 919 F.2d 1575, 1578 (Fed.
Cir. 1990) (indicating that in cases in which the difference between the
claimed invention and the prior art is some range or other variable within the
claims, the applicant must show that the particular range is critical, generally
by showing that the claimed range achieves unexpected results relative to the
prior art range.).
Appellants further argue that neither Maier nor Leiden teach or
suggest stabilizing wood substrates against damage by heat and light as
disclosed in Peter. Appellants contend that one of ordinary skill in the art
therefore would not have had a reasonable expectation that wood and cork as
disclosed in Maier and Leiden would be suitable substrates for stabilization
with Peter’s coating composition, particularly in view of Peter’s disclosure
of applying the composition to only a single type of wood—fir. App. Br.
10- 11,25-27.
However, it was known in the art at the time of Appellants’ invention
that exposing wood to UV light discolors the surface of the wood, and it was
also known that colored cork and dark wood are particularly sensitive to the
discoloring effects of UV and visible light. Peter 1,11. 10-14; Spec. 1,11.
11— 16. It was also known that colored wood could be protected against
discoloration caused by exposure to light by coating the surface of the wood
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with a UV absorbing light stabilizer. Peter 1,1. 26—2,1. 9. As discussed
above, Peter discloses a coating composition that stabilizes or protects wood
against damage caused by exposure to sunlight (Peter 1,11. 3—6), and the
combined disclosures of Peter and Ozai would have suggested a protective
coating composition for wood comprising carbon black, iron oxide, and
hydroxyphenylbenzotriazole, as recited in claim 1. In view of the
knowledge in the art at the time of Appellants’ invention that cork and dark
wood species are particularly sensitive to discoloration by UV light, and can
be protected from discoloration with a UV absorber, the combined
disclosures of Peter and Ozai reasonably would have suggested that applying
a protective coating comprising carbon black, iron oxide, and a
hydroxyphenylbenzotriazole UV absorber to cork and dark wood species
would successfully protect them from discoloration, as recited in claim 1.
In addition, Leiden discloses a coating composition for wood and cork
substrates that protects them from weathering (Leiden col. 1,11. 12—16; col.
7,11. 12—17), and one of ordinary skill in the art reasonably would have
understood that “weathering” as disclosed in Leiden includes exposure to
sunlight. Accordingly, one of ordinary skill reasonably would have
expected that applying a protective coating to cork and wood substrates as
disclosed in Leiden, which comprises carbon black, iron oxide, and a
hydroxyphenylbenzotriazole UV absorber, as suggested by the combined
disclosures of Peter and Ozai, would successfully protect the cork and wood
from discoloration caused by weathering, including exposure to sunlight.
Appellants’ arguments are therefore unpersuasive of reversible error.
Appellants further argue that page 1, line 32 through page 2, line 2
and experimental Examples 1 and 2 of their Specification demonstrate the
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synergistic effects that result from a combination of a hydroxyphenyltriazine
organic UV absorber and small amounts of carbon black or mixtures of
carbon black and transparent inorganic oxides. App. Br. 21—22. Appellants
contend that these synergistic effects set forth in their Specification could
not have been predicted from the disclosures of Peter and Ozai. Id.
However, the burden of analyzing and explaining Specification data to
support an assertion of non-obviousness rests with Appellants. In re Klosak,
455 F.2d 1077, 1080 (CCPA 1972). In the present case, Appellants do not
explain why the limited data for only four compositions provided in the
relied-upon disclosures in their Specification (Spec. 1,1. 32—2,1. 2; 32,1. 1—
35,1. 22),4 are sufficient to show that the full scope of the compositions
covered by claim 1 impart unexpected results relative to the coating
compositions of the closest prior art, Peter. App. Br. 21—22. In re Harris,
409 F.3d 1339, 1344 (Fed. Cir. 2005) (“Even assuming that the results were
unexpected, Harris needed to show results covering the scope of the claimed
range. Alternatively Harris needed to narrow the claims.”); In re Greenfield,
571 F.2d 1185, 1189 (CCPA 1978) (“Establishing that one (or a small
number of) species gives unexpected results is inadequate proof, for ‘it is the
view of this court that objective evidence of non-obviousness must be
commensurate in scope with the claims which the evidence is offered to
support.’”) (quotingIn re Tiffin, 448 F.2d 791, 792 (CCPA 1971)). The
4 Table 1 of Example 1 includes two compositions that contain a UV
absorber (TINUVIN®477DW), iron oxides (Sicotrans® Yellow L 1916 and
Sicotrans® Red L2815), and Carbon Black FW200, while Table 1 of
Example 2 also includes two compositions that contain a UV absorber
(TINUVIN®477DW), iron oxides (Sicotrans® Yellow L1916 and
Sicotrans® Red L2815), and Carbon Black FW200. Spec. 32, 34.
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compositions disclosed in Peter comprise a hydroxyphenyltriazine UV
absorber and iron oxide inorganic pigment (Peter 18,11. 21—26; 19,11. 16—
18), but Examples 1 and 2 of Appellants’ Specification do not include data
providing a comparison between such compositions and the compositions
recited in claim 1, and thus do not provide a comparison to the closest prior
art. Spec. 32,1. 1—35,1. 22. In re Baxter Travenol Labs., 952 F.2d 388, 392
(Fed. Cir. 1991) (“[W]hen unexpected results are used as evidence of
nonobviousness, the results must be shown to be unexpected compared with
the closest prior art.”).
Further, Appellants do not direct us to any statement in the
Specification attesting to the unexpected nature of the relied-upon data, or to
any other persuasive evidence or averment evincing that these results would
have been unexpected by one of ordinary skill in the art at the time of their
invention. App. Br. 21—22. See, e.g., In re Geisler, 116 F.3d 1465, 1471
(Fed. Cir. 1997) (“Geisler made no such assertion [that results were
unexpected] in his application. Nor did Geisler submit any such statement
through other evidentiary submissions, such as an affidavit or declaration
under Rule 132 ... . Instead, the only reference to unexpected results was a
statement by Geisler’s counsel. . . that Geisler’s results were ‘surprising.’”).
Appellants’ arguments to that effect cannot take the place of evidence. In re
De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Greenfield, 571 F.2d
1185, 1189 (CCPA 1978)\ In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974).
Thus, Appellants do not meet their burden of demonstrating that the
claimed method imparts unexpected results sufficient to rebut the
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Examiner’s prima facie case of obviousness. We accordingly sustain the
rejections of claims 1—4, 6—13, 15, and 16 under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner’s rejections of claims 1—4, 6—13, 15, and 16
under 35 U.S.C. § 103(a).
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
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