Ex Parte Schmidt et al

Patent Trial and Appeal Board

Dec 6, 2016

13762965 (P.T.A.B. Dec. 6, 2016)

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.
13/762,965 02/08/2013 Christoph SCHMIDT MERCK-2715-C02 3558
23599 7590 12/08/2016
MILLEN, WHITE, ZELANO & BRANIGAN, P.C.
2200 CLARENDON BLVD.
SUITE 1400
ARLINGTON, VA 22201
EXAMINER
SCHLIENTZ, NATHAN W
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
12/08/2016 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):
docketing@mwzb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPH SCHMIDT, ANDREA HEYLAND,
SABINE SCHOEN, VERONIKA HOCHSTEIN,
and UTA HENSEN1
Appeal 2015-000903
Application 13/762,965
Technology Center 1600
Before DONALD E. ADAMS, ERIC B. GRIMES, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to a
pigment, which have been rejected as obvious. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the Real Party in Interest as MERCK PATENT
GMBH. (Br. 1.)
Appeal 2015-000903
Application 13/762,965
STATEMENT OF THE CASE
The Specification discloses “five-layered pigments based on
multicoated platelet-shaped substrates.” (Spec. 1:5—6.) The Specification
states that
[t]he multilayered pigments according to the invention are
interference pigments which, compared with the known
multilayered pigments having three layers, have
- significantly increased brightness
- greater luster and
- a more pronounced color flop.
{Id. at 3:5-11.)
Claims 1—15 are on appeal. Claim 1 is representative and reads as
follows:
1. A pigment comprising a platelet-shaped, transparent and colorless
substrate comprising thereon at least a 5-layer sequence of
(A) a layer of Sn02, having a layer thickness of 0.1-50 nm,
(B) a layer of TiC>2 in rutile modification, having a layer thickness of 10-800
nm,
(C) a colorless coating having a refractive index n < 1.8, having a layer
thickness of 20-800 nm,
(D) a layer of SnCE, having a layer thickness of 0.1-50 nm,
(E) a layer of TiCE in the rutile modification, having a layer thickness of 10-
800 nm
and optionally
(F) an outer protective layer.
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Appeal 2015-000903
Application 13/762,965
I
The Examiner has rejected claims 1—11 and 13 under 35 U.S.C.
§ 103(a) as obvious based on the Schmidt reference.2 (Final Rej.3 3.) The
Examiner rejects claims 12 and 14 under 35 U.S.C. § 103(a) as obvious
based on the Schmidt reference and Pfaff4 (Final Rej. 10), and rejects claims
14 and 15 under 35 U.S.C. § 103(a) as obvious based on the Schmidt
reference and Collins5 (Final Rej. 11). Appellants have waived arguments
directed to Pfaff or Collins, so the same issues are dispositive for all of these
rejections.
The Examiner finds that the Schmidt reference teaches that a
particularly preferred embodiment is “a coating of the substrate with the
layer assembly: (SI) optional, SnCF, (A) TiCF or Fe2C>3, (B) SiCF,
(Bl) optional, SnCF, (C) TiCF, and (D) final coating related to application
(col. 4, In. 18-25).” (Final Rej. 4.) The Examiner also finds that the
Schmidt reference teaches examples of “multilayered pigments comprising
layers (SI), (A), (B), (Bl) and (C) (Examples 3 and 5).” (Id.)
The Examiner finds that the Schmidt reference teaches ranges of
thickness for each of the layers that overlap the ranges recited in claim 1.
(Id. at 3.) Finally, the Examiner finds that the rutile form of titanium dioxide
(TiCE) would have been obvious because titanium dioxide can only exist in
2 Schmidt et al., WO 99/20695, published Apr. 29, 1999. The Examiner and
Appellants cite U.S. Patent 6,596,070 Bl (July 22, 2003) as an English-
language equivalent (Final Rej. 3; Br. 2) and therefore so do we.
3 Office Action mailed Feb. 13, 2014.
4 Pfaff et al., WO 99/46336, published Sept. 16, 1999.
5 Collins et al., US 5,780,018, issued July 14, 1998.
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Appeal 2015-000903
Application 13/762,965
four forms, and the evidence of record shows that when titanium
tetrachloride (TiCl4) is applied after tin oxide (Sn02), “the tin oxide forces
the precipitated Ti02 to form a rutile modification.” (Id. at 5.) The
Examiner concludes that the claimed pigment would have been prima facie
obvious based on Schmidt. (Id. at 6—7.) We agree with the Examiner’s fact­
finding, reasoning, and conclusion.
Appellants argue that “[tijone of the cited passages teaches a TiCE
layer in rutile modification, much less in the series of layers of the present
claims.” (Br. 3.) Appellants argue that they “provided a Declaration under
37 CFR § 1.132 which compares two otherwise identical pigment[s] in
which, in one, titanium dioxide is present in rutile modification and in the
other in anatase modification. The anatase pigments have considerably
weaker visual performance as noted in the Declaration.” (Id. at 4.)
We are not persuaded by these arguments or by the Schmidt
Declaration.6 The Schmidt Declaration presents “experiments [that] were
carried out in order to compare the properties of the pigments according to
the APPLICATION directed to pigments containing two layers of Tft/E in
the rutile modification (sequence of Sn02 + Ti02) to pigments containing
two layers of Tft/E (no Sn02 layer) in the anatase modification.” (Schmidt
Decl. 2.)
6 Appellants do not identify which declaration they are relying on in the
Appeal Brief, but as best we can understand, they are referring to the
Declaration under 37 C.F.R. § 1.132 of Christoph Schmidt, signed Feb. 5,
2010.
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Appeal 2015-000903
Application 13/762,965
However, as the Examiner has noted (Ans. 5), Appellants themselves
stated that “small amounts of tin oxide drive the hydrolysis of titanium
tetrachloride, and tin dioxide crystallizes with a rutile structure and forces
the precipitated TiCE to form this phase as well.” (Response filed Apr. 17,
2012, in parent application 10/507,331, at 7.) As noted above, the Schmidt
reference discloses a particularly preferred embodiment with layers of TiCE
over layers of SnCE. The Schmidt reference states that the TiCE layers are
deposited by slowly adding an aqueous titanium salt solution (Schmidt 5:4—
9) and provides working examples in which titanium tetrachloride (TiCf) is
used as the titanium salt. (See, e.g., id. at 7:39-67.) Thus, the evidence of
record supports the Examiner’s position that the TiCE layers in the Schmidt
reference are in the rutile modification, and therefore the data in the Schmidt
Declaration do not represent a comparison to the closest prior art.
Appellants argue that the examples of the Schmidt reference contain
iron and therefore, they “have compared a pigment which is even closer to
the present claims than the prior art, and have shown improvement
thereover.” (Br. 4.)
However, the Schmidt reference’s Example 5 is identical to the
pigment of claim 1 on appeal except for the presence of a layer of TiCE
mixed with A12CE (resulting from treatment with a combination of TiCf and
AICI3X6H2O). (Schmidt 7:39-67.) Schmidt characterizes A1CE and hydrates
thereof as “[cjolourless materials of low refractive index.” (Id. at 3:65—67.)
Thus, Example 5 of the Schmidt reference is closer to the pigment of claim 1
than the comparative examples in the Schmidt Declaration, which lack SnCE
and therefore do not have layers of TiCE in the rutile modification.
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Appeal 2015-000903
Application 13/762,965
We therefore affirm the rejection of claim 1. Claims 2—11 and 13
have not been argued separately and therefore fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
Appellants have waived arguments based on the Pfaff and Collins
references. (Br. 4—5.) We therefore affirm those rejections as well. See 37
C.F.R. § 41.37(c)(l)(iv) (“The arguments of appellant with respect to each
ground of rejection . . . shall explain why the examiner erred as to each
ground of rejection contested by appellant.”) See also Hyatt v. Dudas, 551
F.3d 1307, 1314 (Fed. Cir. 2008) (“When the appellant fails to contest a
ground of rejection to the Board, ... the Board may treat any argument with
respect to that ground of rejection as waived. In the event of such a waiver,
the PTO may affirm the rejection of the group of claims that the examiner
rejected on that ground without considering the merits of those rejections.”).
II
The Examiner has rejected claims 1—11 for obviousness-type double
patenting based on the claims of U.S. Patent 6,596,070 (the English-
language equivalent of the Schmidt WO publication). The Examiner finds
that “[cjlaims 1-11 of the present application are mere obvious variants of
US ‘070 as one of ordinary skill in the art would immediately recognize that
the at least five-layered sequence of the present claims is well within the
scope of the claims of US ‘070.” (Final Rej. 15.) We agree with the
Examiner’s reasoning and conclusion.
Appellants argue that the double patenting rejection should be
reversed for the same reasons that the obviousness rejection based on the
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Appeal 2015-000903
Application 13/762,965
Schmidt reference should be reversed. (Br. 5.) This argument is
unpersuasive for the reasons discussed above.
SUMMARY
We affirm all of the rejections on appeal.
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. § 1.136(a).
AFFIRMED
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