Ex Parte Boden et al

Patent Trial and Appeal Board

Jun 13, 2017

14127853 (P.T.A.B. Jun. 13, 2017)

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.
14/127,853 12/19/2013 John T. Boden 67683US014 4715
32692 7590 06/15/2017
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
MOORE, ALEXANDRA MARIE
ART UNIT PAPER NUMBER
1731
NOTIFICATION DATE DELIVERY MODE
06/15/2017 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN T. BODEN and SCOTT R. CULLER1
Appeal 2016-005654
Application 14/127,853
Technology Center 1700
Before BRADLEY R. GARRIS, BEVERLY A. FRANKLIN, and
MONTE T. SQUIRE, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’s
rejections of claims 28—32 under 35 U.S.C. § 102(b) as anticipated by
Erickson (US 2010/0151201 Al, pub. June 17, 2010) and of claim 33 under
35 U.S.C. § 102(b) as anticipated by, or alternatively under 35 U.S.C.
§ 103(a) as unpatentable over, Erickson. We have jurisdiction under 35
U.S.C. § 6.
We REVERSE.
1 3M Company and its affiliate 3M Innovative Properties Company are
identified as the real party in interest. App. Br. 3.
Appeal 2016-005654
Application 14/127,853
Appellants claim a method of making shaped ceramic precursor
particles comprising filling mold cavities with a sol-gel composition, “the
sol-gel composition comprising a liquid vehicle and a ceramic precursor
comprising an alpha alumina precursor, the liquid vehicle comprising a
volatile component [e.g., water] and a release agent dispersed throughout the
volatile component, wherein the release agent comprises an oil”
(independent claim 28).
A copy of representative claim 28, taken from the Claims Appendix of
the Appeal Brief, appears below.
28. A method of making shaped ceramic precursor particles, the
method comprising:
providing a mold having a plurality of mold cavities,
wherein each mold cavity is bounded by a plurality of faces
joined along common edges;
filling at least some of the mold cavities with a sol-gel
composition, the sol-gel composition comprising a liquid
vehicle and a ceramic precursor comprising an alpha alumina
precursor, the liquid vehicle comprising a volatile component
and a release agent dispersed throughout the volatile
component, wherein the release agent comprises an oil; and
removing at least a portion of the volatile component
from the sol-gel composition while the sol-gel composition
resides in the mold cavities thereby providing the shaped
ceramic precursor particles.
In the § 102 rejection of claim 28, the Examiner finds that Erickson
teaches the claimed method including the claim requirement that the sol-gel
composition comprises a liquid vehicle, the liquid vehicle comprising a
volatile component and an oil release agent dispersed throughout the volatile
component (Final Action 2—3).
Appellants correctly explain that Erickson discloses coating mold
cavities with a mold release agent which may be an oil in water but contend
2
Appeal 2016-005654
Application 14/127,853
that “there is no proper basis to argue that oil applied to the mold would
somehow become dispersed throughout the volatile component of the sol-gel
composition [as claimed]” (App. Br. 4).
The Examiner disagrees with Appellants’ contention by urging that
“there would reasonably be some degree of mixing between the liquid
systems [of Erickson’s release agent comprising oil in water for coating the
mold cavities and Erickson’s sol-gel composition comprising water as a
volatile component for filling the mold cavities]” (Ans. 5). According to the
Examiner, “because the specification does not give any special meaning to
‘dispersed throughout’, even a small amount of unavoidable intermixing
would read on ‘dispersed throughout’ [when] giving the claim language its
broadest reasonable interpretation” (id.).
In response, Appellants argue that “the Examiner’s conjecture that the
oil is dispersed . . . throughout the dispersion of Erickson ignores the fact
that no specific mixing occurs in Erickson” (Reply Br. 2). Appellants
further argue that “it is an unreasonable interpretation [by the Examiner] to
assume that ‘throughout’ [in claim 28] means anything less than throughout”
(id. at 2—3).
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
Here, the Examiner does not identity any explicit disclosure in
Erickson that Erickson’s oil release agent is dispersed throughout the
volatile component (i.e., water) of Erickson’s sol-gel. Moreover, the
Examiner fails to provide evidence or scientific reasoning that the method of
Erickson inherently (i.e., necessarily) results in the oil release agent being
dispersed throughout the volatile component. See Ex parte Skinner, 2USPQ
3
Appeal 2016-005654
Application 14/127,853
2d 1788, 1789 (BPAI 1987) (“[T]he examiner must provide some evidence
or scientific reasoning to establish the reasonableness of the examiner’s
belief that the functional limitation is an inherent characteristic of the prior
art.”).
Instead, as indicated above, the Examiner takes the position that,
“even a small amount of unavoidable intermixing would read on [the claim
28 phrase] ‘dispersed throughout’ [when] giving the claim language its
broadest reasonable interpretation” (Ans. 5). We agree with Appellants,
however, that the Examiner’s claim interpretation is unreasonable because it
is not only inconsistent but contrary to the plain language of claim 28 that
“release agent [is] dispersed throughout the volatile component.” Stated
differently, a limited intermixing that disperses release agent through only a
portion of the volatile component cannot be considered to disperse release
agent throughout the volatile component.
For the above-stated reasons, the Examiner erred in finding claim 28
to be anticipated by Erickson. This error or is not remedied in the rejections
of the other claims on appeal. We do not sustain, therefore, any of the
Examiner’s rejections of claims 28—33.
The decision of the Examiner is reversed.
REVERSED
4