Songtao Wu et al.Download PDFPatent Trials and Appeals BoardAug 30, 201914460511 - (D) (P.T.A.B. Aug. 30, 2019) Copy Citation 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. 14/460,511 08/15/2014 Songtao Wu TTC-50412/08 7635 63796 7590 08/30/2019 DINSMORE & SHOHL LLP 900 Wilshire Drive Suite 300 TROY, MI 48084 EXAMINER CHANG, AUDREY Y ART UNIT PAPER NUMBER 2872 NOTIFICATION DATE DELIVERY MODE 08/30/2019 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): MichiganPatTM@dinsmore.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte SONGTAO WU, KHOA VO, DEBASISH BANERJEE, MASAHIKO ISHII, and ALBERTO ARGOITIA ________________ Appeal 2018-002880 Application 14/460,511 Technology Center 2800 ________________ Before JEREMY J. CURCURI, KARA L. SZPONDOWSKI, and MATTHEW J. McNEILL, Administrative Patent Judges. CURCURI, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1 and 3–7. Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We heard the appeal on August 1, 2019. Claims 1 and 3–7 are rejected under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. Final Act. 2–3. Claims 1 and 3–7 are rejected under 35 U.S.C. § 112(a) as failing to comply with the enablement requirement. Final Act. 3. Claims 1, 3–5, and 7 are rejected under 35 U.S.C. § 103 as obvious over Phillips (US 5,570,847; Nov. 5, 1996), Bradley (US 6,246,523 B1; June 12, 2001), Argoitia (6,841,238 B2; Jan. 11, 2005), and Henglein (US 7,413,599 B2; Aug. 19, 2008). Final Act. 4–7. Appeal 2018-002880 Application 14/460,511 2 Claim 6 is rejected under 35 U.S.C. § 103 as obvious over Phillips, Bradley, Argoitia, Henglein, and Sullivan (US 5,423,912; Jun. 13, 1995). Final Act. 7–8. We reverse. STATEMENT OF THE CASE Appellants’ invention relates to “multilayer thin film structures that exhibit a minimum or non-noticeable color shift when exposed to broadband electromagnetic radiation and viewed from different angles with a protective coating thereon.” Spec. ¶ 2. Claim 1 is illustrative and reproduced below: 1. An omnidirectional structural color pigment comprising: a pigment having a reflector layer, a dielectric layer with a thickness of less than 2.0 quarter wave (QW) of a desired reflected center wavelength extending across said reflector layer and an absorber layer extending across said dielectric layer, said reflector layer, dielectric layer and absorber layer being substantially planar layers, said pigment reflecting a single band of visible electromagnetic radiation having a predetermined full width at half maximum (FWHM) of less than 200 nm and a predetermined color shift of less than 30° when said pigment is exposed to broadband electromagnetic radiation and viewed from angles between 0 and 45°; a weather resistant coating comprising an oxide layer covering an outer surface of said pigment and reducing a photocatalytic activity of said pigment by at least 50% compared to said pigment not having said weather resistant coating. PRINCIPLES OF LAW We review the appealed rejections for error based upon the issues identified by Appellants, and in light of the arguments and evidence Appeal 2018-002880 Application 14/460,511 3 produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). ANALYSIS THE WRITTEN DESCRIPTION REJECTION OF CLAIMS 1 AND 3–7 The Examiner finds claims 1 and 3–7 fail to comply with the written description requirement. Final Act. 2–3. In particular, the Examiner finds “[t]he specification fails to teach explicitly as the thickness of the dielectric layer has to be less than 2.0 QW of a desired reflected center wavelength.” Final Act. 3; see also Ans. 3–6. Appellants direct our attention to paragraph 48 and claim 10 of application no. 14/138,499 filed December 23, 2013, which is incorporated by reference into the instant application. See App. Br. 11; see also Reply Br. 2–5. The Specification of the instant application as filed on August 15, 2014 discloses “which in turn is a CIP of U.S. Patent Application Serial No. 14/138,499 filed on December 23, 2013 . . . all of which are incorporated in their entirety by reference.” Spec. ¶ 1, instant application, as filed. Thus, the instant application incorporates application no. 14/138,499 by reference. The Specification of application no. 14/138,499 as filed on December 23, 2013 discloses Regarding the dielectric layer that extends across the reflector layer, the dielectric layer has an optical thickness between 0.1 and 2.0 QW. In some instances, the dielectric layer has an optical thickness between 0.1 and 1.9 QW, while in other instances, the dielectric layer has a thickness between 0.1 and 1.8 QW. In still yet other instances, the dielectric layer has an optical thickness less than 1.9 QW, for example less than 1.8 QW, less than 1.7 QW, less than 1.6 QW, less than 1.5 QW, less than 1.4 QW, less than 1.3 QW, less than 1.2 QW or less than 1.1 QW. In Appeal 2018-002880 Application 14/460,511 4 the alternative, the dielectric layer has an optical thickness can of greater than 2.0 QW. Spec. ¶ 48, application 14/138,499, as filed. “[T]he test for sufficiency [of the written description] is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). In short, we have reviewed the record and we find Appellants’ Specification, by its incorporation of application no. 14/138,499 by reference, reasonably conveys to those skilled in the art that the inventors had possession of “a dielectric layer with a thickness of less than 2.0 quarter wave (QW) of a desired reflected center wavelength” as of December 23, 2013, the filing date of application no. 14/138,499. We, therefore, do not sustain the Examiner’s rejection of claims 1 and 3–7 under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. THE ENABLEMENT REJECTION OF CLAIMS 1 AND 3–7 The Examiner concludes claims 1 and 3–7 fail to comply with the enablement requirement. Final Act. 3. In particular, the Examiner concludes “the specification fails to teach how the dielectric layer with less than 2.0 quarter wave of a center wavelength can make the structural color pigment have omnidirectional or a less than 30 degrees color shift.” Final Act. 3; see also Ans. 7–9 (“none of the paragraphs [0116]-[0117] and [0120]-[0121] disclose sufficient teachings as to inform those skilled in the art to both make and use of the omnidirectional structural color pigment recited in the Appeal 2018-002880 Application 14/460,511 5 claims, in particularly with the thickness of the dielectric layer to be less than 2.0 QW”). Appellants direct our attention to paragraph 48 and claim 10 of application no. 14/138,499 filed December 23, 2013, which is incorporated by reference into the instant application. See App. Br. 14. Appellants also direct our attention to paragraphs 116–117 and 120–121 of the instant application. See App. Br. 14–15; see also Reply Br. 5–6. As explained above, we find Appellants’ Specification, by its incorporation of application no. 14/138,499 by reference, reasonably conveys to those skilled in the art that the inventors had possession of “a dielectric layer with a thickness of less than 2.0 quarter wave (QW) of a desired reflected center wavelength” as of December 23, 2013, the filing date of application no. 14/138,499. When considering these incorporated by reference disclosures together with the disclosures in the instant application at paragraphs 116– 117 and 120–121, we conclude Appellants’ Specification reasonably describes how to make and use the invention to those skilled in the art. We, therefore, do not sustain the Examiner’s rejection of claims 1 and 3–7 under 35 U.S.C. § 112(a) as failing to comply with the enablement requirement. THE OBVIOUSNESS REJECTION OF CLAIMS 1, 3–5, AND 7 OVER PHILLIPS, BRADLEY, ARGOITIA, AND HENGLEIN Contentions The Examiner finds Phillips, Bradley, Argoitia, and Henglein teach all limitations of claim 1. Final Act. 4–6. In particular, the Examiner finds Phillips et al teaches that the dielectric layer may have a thickness between 2.0 quarter wavelengths and 6 quarter Appeal 2018-002880 Application 14/460,511 6 wavelengths of a desired center wavelength, (please see column 6, lines 5-10), which means that the range of the thickness of the dielectric layer can be about 2.0 quarter wavelength that includes the thickness to be slightly less than 2.0 QW. Argoitia et al in the same field of endeavor teaches that in order for the multilayer stack to have no color shift the dielectric layer should have a dielectric material with refractive index greater than 2.0 and having an optical thickness of low number quarter waves such as 1-2 quarter wave of the designed center wavelength, (please see column 7 lines 55-65). It would then have been obvious to one skilled in the art to apply the teachings of Argoitia et al to modify the dielectric material and layer thickness of the dielectric layer to alternatively design the dielectric layer of the multilayer stack to have an optical thickness less than 2.0 QW to achieve the same non-color-shifting of the multilayer stack. Final Act. 6. Among other arguments, Appellants present the following principal argument: Argoitia et al. discloses pigment flakes with diffractive layers with “repetitive structures made of lines or grooves in a material to form a peak and trough structure.” (col. 1, lines 25-27). The diffractive pigment flakes diffract light “into its color components by reflection from the diffraction grating.” (col. 1, lines 23-25). In contrast, the instant application teaches reflection of light from substantially planar interfaces. Given the different structure and modes of operation between the layers disclosed in Argoitia et al. (i.e., layers with lines or grooves that form a peak and trough structure) and the substantially planar layers disclosed and claimed in the instant application (see FIG. 24 of the application above) and disclosed in Phillips et al. and Bradley et al., Appellant submits one skilled in the art would not be motivated to combine the teachings of Argoitia et al. with Phillips et al. and Bradley et al. App. Br. 17–18. In response, the Examiner explains The explicit[] teachings of having the dielectric layer using a material with re[fr]active index greater than 2.0 (such as ZnS), Appeal 2018-002880 Application 14/460,511 7 and having a thickness of 1 to 2 QW will result [in] non-color shifting property of the reflection band is certainly a relevant teachings to one skilled in the art in designing an omnidirectional multilayer structure by modifying the multilayer structure of Phillips et al and Bradley to make the dielectric layer having thickness less than 2.0 QW. The diffractive feature disclosed by Argoitia et al is only to provide decorative features to the pigment flakes, (please see column 7, lines 1-5). One skilled in the art would know that diffractive structure only diffract incident light into multiple diffraction orders, (please see Figure 1) to provide different viewing features at different angles, but it does not affect the reflection spectrum that is solely determined by the multilayer structure through interference effect. Ans. 14–15; see also Ans. 15–17 (“Argoitia et al specifically teaches that the non-color shifting background color of the pigment flakes is provided by the interference multilayer structure solely determined by the layer materials and layer thickness of the interference multilayer structure, (please see column 7, lines 41-65).”). In the Reply Brief, among other arguments, Appellants reply Argoitia et al. states “[t]he present invention brings together diffractive effects in combination with thin film interference effects technology to create new color effects hitherto not seen before” (col., 4, lines 11–13; Emphasis added). That is, the reflectance/transmittance spectrum of a diffractive interference multilayer is not solely determined by the interferences of light reflected off the interfaces between the adjacent layers in the diffractive structures disclosed in Argoitia et al. Reply Br. 13. Appellants further reply “Argoitia et al. is devoid of any teaching that reflection from the diffractive patterns of the multilayer structures disclosed therein can be separated from the reflection from the interfaces between adjacent layers of the multilayer structures.” Reply Br. 13. Appeal 2018-002880 Application 14/460,511 8 Our Review Argoitia discloses the following: A dielectric material with an index of refraction of about 2 or greater having an optical thickness with a low number of quarter waves (i.e., about 1-2 QW), typically results in a low color shift or no color shift at all. A dielectric material with an index of refraction of about 1.65 or less having an optical thickness at a selected design wavelength typically results in a color shifting structure exhibiting a discrete shift between two different background colors as the angle of incident light or viewing angle changes. Argoitia, col. 7, ll. 55–65. Thus, we find Argoitia teaches a dielectric layer with a thickness of less than 2.0 quarter wave (QW). This appeal hinges on whether the Examiner has provided an articulated reasoning with a rational underpinning that it would have been obvious to combine this teaching with the teachings of the other references to achieve the claimed invention. On the record before us, Appellants’ arguments persuade us that the Examiner’s reasoning “to modify the dielectric material and layer thickness of the dielectric layer to alternatively design the dielectric layer of the multilayer stack to have an optical thickness less than 2.0 QW to achieve the same non-color-shifting of the multilayer stack” lacks a rational underpinning. Final Act. 6. In particular, we agree with Appellants that “[g]iven the different structure and modes of operation between the layers disclosed in Argoitia et al. . . . and the substantially planar layers disclosed and claimed in the instant application . . . one skilled in the art would not be motivated to combine the teachings of Argoitia et al. with Phillips et al. and Bradley et al.” App. Br. 18. Appeal 2018-002880 Application 14/460,511 9 In essence, we understand the Examiner’s position is that Argoitia’s teachings relating to the diffraction features are unrelated to Argoitia’s teachings related to the non-shifting background color. However, Appellants have directed our attention to Argoitia’s disclosure of the following: “The present invention brings together diffractive effects in combination with thin film interference effects technology to create new color effects hitherto not seen before.” Argoitia, col. 4, ll. 11–13; see also Reply Br. 13. In particular, we agree with Appellants that “Argoitia et al. is devoid of any teaching that reflection from the diffractive patterns of the multilayer structures disclosed therein can be separated from the reflection from the interfaces between adjacent layers of the multilayer structures.” Reply Br. 13. In short, on the record before us, the weight of the evidence does not support a conclusion that one of ordinary skill in the art would have used Argoitia’s dielectric layer with a thickness of less than 2.0 quarter wave (QW) in the very different structures found in Phillips and Bradley. For example, the non-shifting diffractive flake, which is depicted in Figure 4 of Argoitia, only includes reflector 32 and dielectric layers 34 and 36, and also includes the diffractive structure. To the extent the dielectric layers 34 and 36 each have a thickness of less than 2.0 quarter wave (QW), it is not entirely clear to us, on this record, why a skilled artisan would have modified the different structures of Phillips and Bradley with an expectation that the desired properties recited in claim 1 would result. We, therefore, do not sustain the Examiner’s rejection of claim 1. We also do not sustain the Examiner’s rejection of claims 3–5 and 7, which depend from claim 1. Appeal 2018-002880 Application 14/460,511 10 THE OBVIOUSNESS REJECTION OF CLAIM 6 OVER PHILLIPS, BRADLEY, ARGOITIA, HENGLEIN, AND SULLIVAN The Examiner does not find Sullivan cures the deficiency discussed above with respect to claim 1. See Final Act. 7–8; see also Ans. 17–18. We, therefore, do not sustain the Examiner’s rejection of claim 6. DECISION The Examiner’s decision rejecting claims 1 and 3–7 is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). REVERSED Copy with citationCopy as parenthetical citation