Ex parte Anselmann et al.

Board of Patent Appeals and Interferences

May 25, 2001

08488288 (B.P.A.I. May. 25, 2001)

The opinion in support of the decision being entered today was not written for publication and
is not binding precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RALF ANSELMANN, CARSTEN GRIESSMANN,
MANUELA LOCH, AND KURT MARQUARD
____________
Appeal No. 1998-1353
Application No. 08/488,288
____________
ON BRIEF
____________
Before JOHN D. SMITH, KRATZ, and TIMM, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the Examiner's final rejection of claims
1-9. Claims 1 and 6 were amended, claims 2-4 canceled, and claim 10 added by the amendment
after-final mailed November 27, 1996 (Paper No. 8). This amendment was entered as per the
Advisory Action mailed on January 29, 1997 (Paper No. 9). Therefore, claims 1 and
5-10, which are all of the claims presently pending in this application, are on appeal.
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Application No. 08/488,288
BACKGROUND
Appellants’ invention relates to a composition in the form of a free-flowing powder of
agglomerates and a method of forming the agglomerates without flocculation. The agglomerates are
prepared from a mixture of a binder, solvent and oxide particles comprising SiO , TiO , ZrO , Al O or2 2 2 2 3
a mixture thereof obtained by hydrolytic polycondensation of alkoxides and having a surface modified
by covalently bonded organic groups. The oxide particles are monodisperse, i.e. the particles have a
narrow size distribution. According to the specification at page 3, “[t]he term monodisperse is to be
understood as meaning that the particles of a certain diameter have the lowest possible particle size
scatter lying within a very narrow range.” A standard deviation of particle diameter of less than 10%
and in particular less than 5% is preferred. The monodisperse oxide particles have a diameter between
10 nm and 10 µm. The binder, solvent and oxide particles are mixed together to form a suspension or
dispersion and then the solvent is removed by distillation. The resulting agglomerates contain between
70-95% by weight of oxide particles and 5-30% by weight binder. The agglomerates have a diameter
of 1-500 µm. Claims 1 and 6 are illustrative:
1. Preparations of monodisperse spherical oxide particles having a particle diameter between
10 nm and 10 µm and an essentially non-volatile binder in the form of a free-flowing powder of
agglomerates having a diameter of between 1 µm and 500 µm, in which the particles are bonded to one
another by the binder and in which 70 to 95% by weight of oxide particles and 30 to 5% by weight of
binder are present, obtainable by mixing the oxide particles homogeneously with the binder in a
corresponding ratio together with a solvent which is volatile being present in a weight ratio of 1:1 to
1:100, and then removing the solvent from the resulting suspension or dispersion by distillation, wherein
the monodisperse spherical oxide particles comprise SiO , TiO , ZrO , Al O or a mixture thereof, are2 2 2 2 3
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Application No. 08/488,288
We have enclosed a more complete and more readable version of this article.1
The rejection under 35 U.S.C. § 102(b) as being anticipated by Barker has been withdrawn2
(Answer, page 2).
obtained by hydrolytic polycondensation of alkoxides and have a surface modified by covalently
bonded organic groups.
6. Process for the preparation of preparations according to Claim 1, characterized in that 70 to
95% by weight of monodisperse spherical oxide particles with a particle diameter between 10 nm and
10 µm are mixed homogeneously with 30 to 5% by weight of an essentially non-volatile binder together
with a solvent being present in a weight ratio of 1:1 to 1:100, and the solvent is then removed from the
resulting suspension or dispersion by distillation, a free-flowing powder of agglomerates with a diameter
between 1 µm and 500 µm being obtained without flocculation.
The prior art references of record relied upon by the Examiner in rejecting the appealed claims
are:
Barker et al. (Barker) 4,701,218 Oct. 20, 1987
Kaliski 5,346,546 Sep. 13, 1994
Jon E. Browning, Agglomeration: Growing Larger in Applications and Technology, Chemical
Engineering, Dec. 4, 1967, at 147 .1
8 Chemical Engineer’s Handbook 57-65 (Robert H. Perry & Cecil H. Chilton eds., 5 ed. 1973).th
The grounds of rejection on appeal are as follows:
1. Claims 1 and 5-10 stand rejected under 35 U.S.C. § 102(e) as anticipated by or, in the alternative,
under 35 U.S.C. § 103 as obvious over Kaliski.
2. Claims 1, 5-7 and 10 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Barker .2
Appeal No. 1998-1353 Page 4
Application No. 08/488,288
We note that the tenor of the disclosure as a whole indicates that “highly disperse” may be3
better interpreted as “highly monodisperse.”
3. Claims 1 and 5-10 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Perry or
Browning.
OPINION
We reverse all of the rejections for the following reasons.
The Rejection over Kaliski
Kaliski describes forming aggregate-TiO pigment products containing at least 50, preferably2
more than 77, parts by weight particulate TiO and 0.1 to 23 parts by weight cements/adhesives, i.e.2
binder (col. 12, lines 37-43). The TiO particulate is “derived from prior art TiO pigment products in2 2
the state 'as is,' or comminuted further, beyond the limits of comminution practiced in the prior art.”
(col. 11, lines 16-24). While Kaliski indicates that TiO raw materials suitable for synthesizing the2
aggregates include the ultrafine type, which are “almost monodisperse” or “highly disperse ”, Kaliski3
does not describe a free flowing powder of agglomerates containing monodisperse TiO having a2
surface modified by covalently bonded organic groups as required by claim 1. The Examiner states in
the rejection (Substitute Examiner’s Answer, pages 5-6) that “[t]he addition of organophilic
components to modify the surface of the particles as recited in the last line of claim 1 is addressed in
column 41, lines 33-66 et al.” (Substitute Answer, page 5, last line to page 6, line 2). We agree with
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Application No. 08/488,288
the Appellants that Kaliski’s description at column 41, lines 33-66 does not teach the claimed covalent
bonding of organic groups on the surface of the oxide particles (Brief, page 4). Column 41, lines 33-66
describes imparting organophilic properties to the aggregate-TiO pigment product by adding functional2
organic, cationically active compounds with at least two reactive groups to the solutions of inorganic
crosslinking salts used for the in-situ synthesis of the complex microgel cements employed in the
preferred mode of manufacturing the aggregate-TiO pigment products (col. 41, lines 33-43). Kaliski2
specifically indicates that the functional organic compounds modify the surface of the microgel and only
indirectly modify the aggregate-TiO pigment products (col. 41, lines 59-66). No covalent bonding2
with the TiO is described nor has the Examiner provided a sufficient reason to believe that such2
covalent bonding inherently occurs. Therefore, the claims are not anticipated by the description of
aggregate TiO provided by Kaliski. 2
In addition, the Examiner’s attempt at establishing the obviousness of using a surface modified
TiO in the aggregate-TiO of Kaliski falls short. In the argument section of the Substitute Answer, the2 2
Examiner states that “the surface modification of monodispersed particles is known and admitted
conventional on page 4, line 36 - page 5, line 1 of the specification.”(Substitute Answer, page 10). At
page 4, line 36 - page 5, line 1, the specification states that “[a] corresponding two-stage process for
the preparation of various metal oxides and also mixed oxides which moreover also have glycolic
groups bonded chemically to the surface is furthermore described in EP 0 391 447.” However, the
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Application No. 08/488,288
Examiner has advanced no reason, suggestion, or motivation for substituting the TiO raw material2
described by Kaliski with the metal oxide particles having glycolic groups bonded chemically to the
surface described in the specification as known in the prior art. We, therefore, agree with the
Appellants that while the surface modification of monodispersed particles was known as discussed at
page 4, line 36 to page 5, line 1 of the specification, the Examiner failed to establish that forming
agglomerates with such particles was obvious to one of ordinary skill in the art at the time of invention
(Brief, page 3).
With respect to the process of claim 6, we note that this claim excludes flocculation. In other
words, the claim is limited to the process described in the specification in which binder is dissolved in
solvent (specification, page 7, lines 34-37) and then oxide particles dispersed in the solution of binder
and solvent (specification, page 8, lines 3-5). In contrast, Kaliski describes a process of coflocculating
TiO and binder dispersed in solvent. The binder of Kaliski is not dissolved in the solvent but merely2
dispersed as a solid. While Appellants’ specification describes a process of solid binder dispersion,
claim 6 excludes this alternative process.
For the above reasons, we conclude that the Examiner has failed to establish a prima facie
case of unpatentability over Kaliski.
The Rejection over Barker
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Application No. 08/488,288
Barker describes floccular compositions containing ultrafine inorganic particles, a size-stabilizer,
and a flocculation modifier which comprises a polyelectrolyte (col. 1, line 58 to col. 2, line 9). We
agree with Appellants that Barker does not disclose an agglomerate having at least 70 weight percent
oxide particles as required by claim 1 (Brief, page 5). Note the paragraph bridging columns 3 and 4
which states that “concentrations of ultrafine particles in the floccular composition can be as high as
60% by weight ...” In this discussion, “ultafine particles” refers to ultrafine inorganic particles with
which particles of size-stabilisers are combined. Baker suggests that concentrations of ultafine inorganic
particles above 60% by weight are not possible and therefore, concentrations in the claimed range are
not obvious from the teachings of Barker.
With respect to the process of claim 6, we note that Barker forms the composition by
flocculation and, as explained above, claim 6 excludes flocculation.
We conclude that the Examiner has failed to establish a prima facie case of obviousness over
Barker.
The Rejection over Perry or Browning
Perry and Browning each generally describe the process of agglomeration. As pointed out by
the Appellants (Brief, page 6), neither of these references describe agglomerating monodisperse
spherical oxide particles. The Examiner notes that the monodisperse oxide particles were known in the
prior art (Answer, page 8) and concludes that it would have been obvious to treat the monodisperse
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Application No. 08/488,288
powders in the same manner as other powders for the reasons set forth in Perry at page 8-57 and
Browning at pages 148-149. The Examiner indicates that Browning discusses the agglomerating
processing steps at pages 161-170. This section of Browning discusses agglomeration by agitation.
Browning indicates that each material must be evaluated independently to determine whether agitation
will produce agglomeration (page 161, col. 1, lines 8-10). Browning further indicates that the particles
must be in a size range that will permit a pellet or ball to form (page 161, col. 2, lines 13-14). The
Examiner has provided no evidence that those of ordinary skill in the art at the time of invention
understood that monodisperse oxide particles of diameter between 10 nm and 10 µm were of a suitable
size range for agglomeration by the method of Browning. From this disclosure, one of ordinary skill in
the art would not have had a reasonable expectation of success of forming a free-flowing powder of
agglomerates containing 1-500 µm diameter monodisperse oxide particles. Therefore, we agree with
the Appellants that the generic descriptions of agglomeration provided by Perry and Browning do not
render the preparation and process of the claims obvious (Brief, page 6).
We conclude that the Examiner has failed to establish a prima facie of obviousness over either
Browning or Perry.
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Application No. 08/488,288
CONCLUSION
To summarize, the decision of the Examiner to reject claims 1 and 5-10 under 35 U.S.C. §§
102(e) and 103 is reversed.
REVERSED
JOHN D. SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PETER F. KRATZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CATHERINE TIMM )
Administrative Patent Judge )
Appeal No. 1998-1353 Page 10
Application No. 08/488,288
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