Songtao Wu et al.

Patent Trials and Appeals Board

Aug 30, 2019

14460511 - (D) (P.T.A.B. Aug. 30, 2019)

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.
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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
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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
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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
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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
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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),
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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.
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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.
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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.

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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