Ex Parte Alsewailem et al

Patent Trial and Appeal Board

Oct 6, 2016

13784055 (P.T.A.B. Oct. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/784,055 03/04/2013 Fares D. ALSEW AILEM
25570 7590 10/11/2016
Roberts Mlotkowski Safran Cole & Calderon, P.C.
7918 Jones Branch Drive
Suite 500
McLean, VA 22102
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.
P030DIV1 3795
EXAMINER
HILL, NICHOLAS E
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
10/11/2016 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):
lgallaugher@rmsc2.com
docketing@rmsc2.com
dbeltran@rmsc2.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte FARES D. ALSEWAILEM and
Y AZEED A. BINKHEDER
Appeal2014-008086
Application 13/784,055
Technology Center 1700
Before TERRY J. OWENS, JEFFREY T. SMITH, and BRIAND. RANGE,
Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1--4 and 6-8. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim a composition comprising date pit particulate
and a thermosetting binder. Claim 1 is illustrative:
1. A composition comprising a mixture of date pit particulate
from the fruit of Phoenix dactylifera L., variety khlaas or sekari,
and a thermosetting polymer selected from the group consisting
of epoxies, vinyl esters and polyesters, wherein the date pit
Appeal2014-008086
Application 13/784,055
particulate has an average size of between about 0.25 mm and
1.0 mm.
Maine
The References
us 5,346,930 Sep. 13, 1994
Fares D. Alsewailem and Yazeed A. Binkheder, Preparation and
Characterization of Polymer/Date Pits Composites, 00 J. Reinforced
Plastics & Composites 1-7 (2009) (hereinafter Alsewailem).
The Rejection
Claims 1--4 and 6-8 stand rejected under 35 U.S.C. § 103 over Maine
in view of Alsewailem.
OPINION
We reverse the rejection. We need address only the sole independent
claim, i.e., claim 1. That claim requires a date pit particulate average
particle size between about 0.25 mm and 1.0 mm.
Maine discloses a pencil slat comprising a thermosetting binder which
can be an epoxy resin and a particulate filler which can be fruit pit flour
(col. 3, 11. 4--15).
Alsewailem discloses a polymer/date pit composite wherein the
polymer is high density polyethylene or polystyrene and the date pits are of
the variety khlaas or sekari and have a 0.15 mm average particle size
(Abstract; p. 3).
The Examiner asserts that the Appellants' average particle size range
of about 0.25 mm to 1.0 mm encompasses Alsewailem's 0.15 mm average
particle size because the difference between 0.15 and 0.25 is only 13% of the
0.25-1.0 range (Ans. 2, 5).
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Appeal2014-008086
Application 13/784,055
'"[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.'" In re
Translogic Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re
Hyatt, 211F.3d1367, 1372 (Fed. Cir. 2000)).
The Appellants' total disclosure regarding particle size is: "The date
pits are advantageously ground or chopped to particulate of an average size
of between about 0.25 mm and 1.0 mm" (Spec. i-f 21). The Examiner does
not establish that the broadest reasonable interpretation of the Appellants'
claim term "about 0.25 mm" consistent with that disclosure encompasses
0.15 mm. The Examiner's assertion that reducing the Appellants' particle
size by 13% of the disclosed range (i.e., to 0.15 mm) would result in only a
marginal change in physical properties of the composite (Ans. 6), even if
correct, does not establish that the broadest reasonable interpretation of the
Appellants' claim term "about 25 mm" consistent with the Specification
includes 0.15 mm.
Hence, the Examiner has not established a prima facie case of
obviousness of the Appellants' claimed composition.
DECISION/ORDER
The rejection of claims 1--4 and 6-8 under 35 U.S.C. § 103 over
Maine in view of Alsewailem is reversed.
It is ordered that the Examiner's decision is reversed.
REVERSED
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