Ex Parte De Winter et al

Patent Trial and Appeal Board

Dec 29, 2016

13148755 (P.T.A.B. Dec. 29, 2016)

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.
W9802-01 4599
EXAMINER
BUTCHER, ROBERT T
ART UNIT PAPER NUMBER
1768
MAIL DATE DELIVERY MODE
13/148,755 02/17/2012
30634 7590 12/29/2016
GRACE GMBH & CO. KG
7500 GRACE DRIVE
COLUMBIA, MD 21044
Kris P. De Winter
12/29/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KRIS P. DE WINTER, NICOLAS H.M. LELIVELD,
HORST HERRIG, and DANIEL RAY FRUGE
Appeal 2015-007461
Application 13/148,755
Technology Center 1700
Before ROMULO H. DELMENDO, JULIA HEANEY, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal the Examiner’s final rejection of claims 1—7, 21,
25, 26, and 28—34. 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.
1 In this decision, we refer to the Final Office Action appealed from, mailed
June 16, 2014 (“Final Act.”); the Appeal Brief dated March 10, 2015 (“App.
Br.”); the Examiner’s Answer to the Appeal Brief dated June 10, 2015
(“Ans.”); and the Appellants’ Reply Brief dated August 7, 2015 (“Reply
Br.”).
2 Appellants identify W.R. Grace & Co.-Conn, as the Real Party in Interest.
App. Br. 3.
Appeal 2015-007461
Application 13/148,755
The Claimed Invention
Appellants’ disclosure relates to metal oxide dispersions, polymeric
compositions including such metal oxide dispersions, and methods of
making the metal oxide dispersions. Spec. 11. The compositions include
metal oxide particles suspended in oil or other suited media, with or without
stabilization. Id. at 13. Claims 1 and 25 are illustrative of the claims on
appeal and are reproduced below from the Claims Appendix to the Appeal
Brief (App. Br. 17, 18):
1. A metal oxide particulate dispersion comprising:
a continuous liquid phase comprising oil; and
particles dispersed within the oil, said particles consisting
of surface-treated metal oxide particles having an average
particle size of 35 microns or less, said surface-treated metal
oxide particles having particle surfaces with increased
hydrophobicity when compared to identical, untreated metal
oxide particles;
wherein the dispersion comprises from 0 to less than 10%
by weight of any combination of water and a water miscible
solvent, based on a total weight of the dispersion.
25. The metal oxide particulate dispersion according to claim
1, wherein the dispersion consists essentially of said oil, said
surface-treated metal oxide particles, and from 0 to less than
10% by weight of any combination of said water and said water
miscible solvent, based on a total weight of the dispersion.
The Reference
The Examiner relies on the following prior art reference as evidence
in rejecting the claims on appeal:
Baran, Jr. et al., US 2004/0242729 A1 Dec. 2, 2004
(hereinafter “Baran”)
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Application 13/148,755
The Rejection
On appeal, the Examiner maintains the following rejection: Claims 1—
7, 21, 25, 26, and 28—34 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Baran. Ans. 2; Final Act. 3.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellants in light of this appeal record, we affirm the Examiner’s
rejections for the reasons set forth in the Answer to the Appeal Brief and
Final Office Action appealed from, which we adopt as our own. We
highlight and address specific findings and arguments for emphasis as
follows.
Claims 1—7, 21, 26, and 29—34
Appellants argue claims 1—7, 21, 26, and 29-34 as a group. We select
claim 1 as representative and the remaining claims stand or fall with claim 1.
37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Baran suggests a particulate dispersion
satisfying all of the limitations of claim 1 and concludes that the reference
would have rendered claim 1 obvious. Ans. 2, 3 (citing Baran, Abstract, ||
16, 23, 27, 40). In particular, the Examiner finds that Baran discloses: (1) a
metal oxide particulate dispersion comprising water and oil; (2) a continuous
liquid phase; (3) that the continuous liquid phase may comprise from 0—
100% organic liquid and 0-100% water; and (4) that the organic liquid may
be oil, as claimed. Id. at 2 (citing Baran, Abstract, 140).
Appellants argue that the Examiner’s rejection of claim 1 should be
reversed for a number of reasons. App. Br. 8—13. In particular, Appellants
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Application 13/148,755
argue that: (1) “Baran fails to teach or suggest Appellants’ claimed
dispersion” (App. Br. 8); (2) “Baran teaches away from Appellants’ claimed
dispersion” (id. at 8); (3) “Baran suggests a continuous liquid phase in the
form of 100 wt% organic liquid” (id. at 9); (4) “Baran fails to suggest, in any
way, a ‘dispersion’ comprising a continuous liquid phase in the form of a
water immiscible (e.g., oil) component with an insoluble or immiscible
liquid component dispersed therein” (id. at 9); (5) “Baran guides one skilled
in the art to utilize various liquids to form the continuous liquid phase (e.g.,
water, organic liquids, oils, fluorinated compounds, polymers, and
combinations thereof)” (id. at 10); (6) “Baran does not suggest to one skilled
in the art, or guide one skilled in the art, to utilize a combination of oil and
water to form a given ‘continuous liquid phase’” (id. at 11); (7) “Appellants’
claimed metal oxide particulate dispersions specifically exclude any
particles other than those specifically recited” in the claim (id. at 11); and (8)
the Examiner’s proposed modification “would change the principle of
operation of the teaching of Baran” (id. at 13).
We are not persuaded by any of these arguments. On the record
before us, we find that the Examiner’s conclusion, based on underlying
findings, that Baran suggests a particulate dispersion satisfying all of the
limitations of claim 1 are supported by a preponderance of the evidence and
based on sound technical reasoning. Baran, Abstract, || 16, 23, 27, 39, 40.
As the Examiner finds (Ans. 7, 8) and contrary to what Appellants
argue, Baran does suggest the claimed dispersion including a continuous
liquid phase comprising both oil and water. Baran, Abstract, || 16, 40-42.
Appellants’ arguments regarding the continuous liquid phase and
particularly, that Baran suggests a continuous liquid phase comprising only
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Application 13/148,755
“100 wt% organic liquid” (App. Br. 9) are unpersuasive because Baran’s
disclosure is not limited to the specific embodiment of 0 wt% water. In re
Mills, 470 F.2d 649, 651 (CCPA 1972) (“[A] reference is not limited to the
disclosure of specific working examples.”). Rather, as the Examiner
correctly points out (Ans. 7), the claims encompass dispersions comprising
“0 to less than 10” wt% water or water miscible solvent and Baran discloses
embodiments that include both oil and water, which read squarely on the
claimed range. Baran, 140 (disclosing that in some embodiments, the
dispersions “may be any range between 100 and 0 weight percent water” and
“may be any range between 100 and 0 weight percent organic”).
Moreover, we concur with the Examiner’s analysis and finding (Ans.
8—11) that Baran’s teachings suggest and provide ample guidance to one of
ordinary skill in the art to have selected a metal oxide particulate dispersion
comprising a combination of oil and water. Baran, Abstract, || 16, 23, 27,
39, 40-42. Contrary to what Appellants’ argument suggests, the fact that
Baran discloses “various liquids to form the continuous liquid phase” does
not render any particular liquid or liquid combination less obvious. Merck &
Co., Inc. v. Biocraft Labs, Inc., 874 F.2d 804, 807 (Fed. Cir. 1989).
We do not find Appellants’ teaching away arguments (App. Br. 8, 15)
persuasive because Appellants do not identify sufficient evidence to support
them, and we will not read into the reference a teaching away where no such
language exists. Cf. DyStar Textilfarben GmbHv. C.H. Patrick Co., 464
F.3d 1356, 1364 (Fed. Cir. 2006). In particular, Appellants’ contention that
“Baran teaches away from [the] claimed dispersion” (App. Br. 8) is
conclusory and, without more, insufficient to establish that the reference
teaches away from the claimed invention or adequately rebut the Examiner’s
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Application 13/148,755
analysis and findings in this regard. In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984). Appellants also do not identify any teaching in Baran
which discourages one of ordinary skill in the art from a metal oxide
particulate dispersion comprising a continuous liquid phase and particles
dispersed therein, as claimed. In re Fulton, 391 F.3d 1195, 1201 (finding
that there is no teaching away where the prior art’s disclosure “does not
criticize, discredit, or otherwise discourage the solution claimed”).
Appellants’ argument that the Examiner’s proposed modification
“would change the principle of operation of the teaching of Baran” (App.
13) is equally unpersuasive because it is conclusory and Appellants do not
provide an adequate technical explanation to support it. De Blauwe, 736
F.2d at 705.
We do not find Appellants’ argument that the “claimed metal oxide
particulate dispersions specifically exclude any particles other than those
specifically recited” (App. Br. 11) persuasive for the well-stated reasons
provided by the Examiner at pages 6 and 7 of the Answer. As the Examiner
explains (Ans. 6), the preamble of claim 1 recites “comprising” transitional
language and thus, does not exclude additional components as Appellants
argue. Indeed, as the Examiner finds {id.), Baran’s dispersions comprising
both insoluble inorganic nanoparticles and surface modified nanoparticles
(Baran, | 8) and including additional metal oxide particles in the dispersion
are not excluded by claim 1 as drafted.
Claim 25
Appellants argue that the Examiner’s rejection of claim 25 should be
reversed for reasons similar to those previously discussed above regarding
claim 1. App. Br. 13. In particular, Appellants argue that “the claim
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Application 13/148,755
language of dependent claim 25 excludes any additional components from
Appellants’ claimed dispersion other than those specifically recited if the
additional components ‘materially affect the basic and novel characteristics’
Appellants’ claimed dispersion.” Id. at 13, 14. Appellants contend that:
additional particles, such as carbon black, aluminum oxide,
cerium oxide, etc. listed in paragraph [0042] of Baran, and (2)
additional liquids other than (i) oil, (ii) water, and (iii) a water
miscible solvent are specifically excluded from Appellants’
claimed dispersion of dependent claim 25.
Id. at 14.
We do not find Appellants’ argument persuasive for largely the same
reasons discussed above in affirming the Examiner’s rejection of claim 1. In
particular, because claim 25’s “consisting essentially of’ transitional
language includes not only what is specifically recited in the claim, but also
any other materials which “do not materially affect the basic and novel
characteristic(s)” of the claimed dispersion, claim 25 does not necessarily
exclude the components identified by Appellants. In re Herz, 537 F.2d 549,
551-52 (CCPA 1976) (quoting In re Janakirama-Rao, 317 F.2d 951 (CCPA
1963)). Rather, Appellants have the burden of showing that the additional
ingredients taught by Baran materially affect the basic and novel
characteristics of the claimed invention. See In re De Lajarte, 337 F.2d 870,
873-74 (CCPA 1964).
On this record, however, Appellants have not met their burden.
Appellants do not identity or direct us to sufficient evidence in the record
that any of the additional components Baran discloses would materially
affect the basic and novel characteristics of the claimed dispersion.
Appellants’ argument that “claim 25 excludes any additional components”
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(App. Br. 13) is conclusory and, without more, insufficient to satisfy
Appellants’ evidentiary burden in this regard. De Blauwe, 736 F.2d at 705.
Claim 28
Claim 28 is similar to claim 1 and recites:
A metal oxide particulate dispersion comprising:
a continuous liquid phase comprising oil;
a water miscible liquid phase comprising from greater
than 0 to less than 10% by weight of any combination of water
and a water miscible solvent, based on a total weight of the
dispersion; and
metal oxide particles having an average particle size of
35 microns or less dispersed within the oil.
App. Br. 19 (Claim’s App’x).
Appellants argue that the Examiner’s rejection of claim 28 should be
reversed “for some of the reasons” previously presented above regarding
claim 1. App. Br. 15. In particular, Appellants argue that “Baran fails to
disclose, teach or suggest [the claimed] dispersion” and that “Baran
specifically teaches away from such a ‘dispersion.’” Id. at 15. Appellants
further argue that
There simply is no suggestion in the teaching of Baran that
would have lead one skilled in the alt to form a dispersion by
adding, as a dispersed phase within a continuous oil phase, a
dispersed water or water miscible liquid phase in addition to the
dispersed solid insoluble particle phase.
Id. at 15.
We remain unpersuaded by these arguments for essentially the same
reasons previously discussed above in affirming the Examiner’s rejection of
claim 1 and because Appellants’ naked assertion that the prior art fails to
teach or suggest a claim’s limitation is not an argument in support of
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separate patentability sufficient to weigh in favor of non-obviousness. Cf. In
reLovin, 652 F.3d 1349, 1356-57 (Fed. Cir. 2011); see also 37 C.F.R.
§ 41.37(c)(l)(iv).
Accordingly, we affirm the Examiner’s rejection of claims 1—7, 21,
25, 26, and 28—34 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable
over Baran.
DECISION/ORDER
The Examiner’s rejection of claims 1—7, 21, 25, 26, and 28—34 is
affirmed.
It is ordered that the Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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