Ex Parte DIEKMANN et alDownload PDFPatent Trials and Appeals BoardMay 17, 201913537148 - (D) (P.T.A.B. May. 17, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/537,148 06/29/2012 Wolfgang DIEKMANN 22850 7590 05/21/2019 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 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. 399902US99 6450 EXAMINER PATEL, RONAK C ART UNIT PAPER NUMBER 1788 NOTIFICATION DATE DELIVERY MODE 05/21/2019 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): patentdocket@oblon.com OBLONPAT@OBLON.COM iahmadi@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WOLFGANG DIEKMAN, FRANZ-ERICH BAUMANN, MAIK GREBE, KRISTIANE WARNKE, and SYLVIA MONSHEIMER Appeal2017-010199 Application 13/537,148 Technology Center 1700 Before ROMULO H. DELMENDO, JEFFREY T. SMITH, and MERRELL C. CASHION, JR., Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL The Applicants ("Appellants") 1 appeal under 35 U.S.C. § 134(a) from the Primary Examiner's decision to reject claims 1, 6, 7, 9, and 14-16.2 We have jurisdiction under 35 U.S.C. § 6(b). The Appellants' arguments were heard on May 14, 2019. We reverse. 1 The Appellants identify the real party in interest as "Evonik Degussa GmbH" (Appeal Brief filed April 25, 2017 ("Appeal Br."), 1). 2 Appeal Br. 4-14; Reply Brief filed July 24, 2017 ("Reply Br."), 1-6; Non- Final Office Action entered December 14, 2016 ("Non-Final Act."), 3-20; Examiner's Answer entered June 23, 2017 ("Ans."), 2-38. Appeal2017-010199 Application 13/537,148 I. BACKGROUND The subject matter on appeal relates to a powder comprising composite particles (Specification filed June 29, 2012 ("Spec."), 1, 11. 11- 14 ). According to the Appellants, moldings made from the claimed powder exhibit less susceptibility to warpage than conventional moldings (id. at 1, 11. 16-17). Representative claim 1, the sole independent claim on appeal, is reproduced from the Claims Appendix to the Appeal Brief, as follows: 1. A powder, comprising composite particles: wherein the composite particles, comprise: a core particle; and a coating of a precipitated polymer on the core; wherein a thickness of the precipitated polymer coating of the composite particle is from 1.5 to 35 µm, the core particle is at least one material selected from the group consisting of a metal, a metal nitride, a semimetal nitride and a metal oxide selected from the group consisting of Ab03, Zr02, ZnO, Bi203, Ce02, ITO (indium oxide doped with tin(IV) oxide), having a dso median diameter of from 1 to 100 µm, the precipitated polymer of the coating comprises at least one polymer selected from the group consisting of nylon- I 1, nylon-12, PA1010, PA1012, PA1212 and PA1013, the melting point of the precipitated polymer in a first heating procedure is greater than in a second heating procedure, as measured by differential scanning calorimetry (DSC), a ratio of a dso median diameter of the composite particles to the dso median diameter of the core particles is 1.15 to 30, and the melting point of the precipitated coating polymer is obtainable when the polymer is exposed to an electromagnetic energy. (Appeal Br. 15 (Claims Appendix).) 2 Appeal2017-010199 Application 13/537,148 II. REJECTIONS ON APPEAL The claims on appeal stand rejected under 35 U.S.C. § 103(a) (pre- AIA) as follows: A. Claims 1, 6, 7, and 14-16 as unpatentable over Jacobson3 in view of Hou,4 Keoshkerian et al. 5 ("Keoshkerian"), Christian et al. 6 ("Christian"), and Zhou et al. 7 ("Zhou") or Nguyen et al. 8 ("Nguyen"); B. Claim 9 as unpatentable over Jacobson, Hou, Keoshkerian, Christian, and Zhou or Nguyen, further in view of Hayashi et al. 9 ("Hayashi"); C. Claims 1, 6, 7, and 14-16 as unpatentable over Hou in view of Jacobson, Keoshkerian, Christian, and Zhou or Nguyen; and D. Claim 9 as unpatentable over Hou, Jacobson, Keoshkerian, Christian, and Zhou or Nguyen, further in view of Hayashi. (Ans. 2-38; Non-Final Act. 3-20.) III. DISCUSSION The Examiner finds that Jacobson describes polymer-coated inorganic particles (Ans. 2). Relative to claim 1, the Examiner acknowledges that 3 US 5,562,978, issued October 8, 1996. 4 US 5,270,445, issued December 14, 1993. 5 US 5,215,855, issued June 1, 1993. 6 US 2008/0139756 Al, published June 12, 2008. 7 US 2012/0077405 Al, published March 29, 2012. 8 US 2013/0344325 Al, published December 26, 2013. 9 US 2002/0069790 Al, published June 13, 2002. 3 Appeal2017-010199 Application 13/537,148 Jacobson does not disclose the specified thickness for the precipitated polymer coating of 1.5-35 µm, the same precipitated polymer forming a coating on the specified core particles, and the specified ratio of the dso median diameter of the composite particles to the dso median diameter of the core particles of 1.15-30 (id. at 3). To bridge these gaps, the Examiner relies on Hou, Keoshkerian, Christian, and Zhou or Nguyen and then concludes that a person having ordinary skill in the art would have modified Jacobson's polymer-coated particles to arrive at the Appellants' claimed powder composite particles for various reasons (id. at 3-6). Alternatively, the Examiner finds that Hou describes polymer- encapsulated pigment particles that differ from the Appellants' powder composite particles as specified in claim 1 in terms of the thickness of the precipitated polymer coating of 1. 5-3 5 µm, the dso median diameter of the core particles of 1-100 µm, and the identity of the specified polymer (id. at 9-10). The Examiner then relies on Jacobson, Keoshkerian, Christian, and Zhou or Nguyen to conclude that a person having ordinary skill in the art would have combined the references to arrive at the claimed invention (id. at 10-14). We concur with the Appellants that the Examiner's rejections are not well-founded. As the Appellants point out (Appeal Br. 4-9), the applied prior art references relate to particles that differ structurally and address different problems or utilities relative to the Appellants' invention and to each other. Specifically, Jacobson describes synthetic organic fibers containing finely-divided inorganic particles provided with an organic polymer coating to decrease abrasive wear in equipment used to handle the fibers (Jacobson, col. 1, 11. 16-25)-not powder used for moldings as 4 Appeal2017-010199 Application 13/537,148 disclosed in the Appellants' Specification (Spec. 1, 11. 11-17). Similarly, Hou, the alternative primary reference, is also unrelated to the current invention because it relates to polymer-encapsulated pigment particles for use in liquid toner dispersions (Hou, col. 1, 11. 7-22). Indeed, all the rejections rely primarily on the combination of Jacobson and Hou, and that combination is not based on a rational underpinning because Hou' s teaching regarding precipitated particles having roughened outer surfaces (for the purpose of enhancing adhesion) appears to be contrary to Jacobson's goal in providing particles with a coating in order to reduce abrasive wear on equipment used to handle the fiber materials into which the particles are incorporated (Jacobson, col. 1, 11. 17-25; Hou, col. 12, 11. 4-6). The remaining references are also not particularly relevant to the Appellants' claimed invention or to either Jacobson or Hou (Keoshkerian, Abstract ( disclosing encapsulated toner composition comprising a core polymer resins encapsulated by a polymer shell containing a siloxane component); Christian, Abstract (disclosing surface-modified precipitated silica); Zhou, Abstract ( disclosing a core/shell nanofiber woven; Nguyen, Abstract ( disclosing a composite article manufactured by curing an adhesive composition and reinforcing fiber)). Because the Examiner does not sufficiently identify any interrelatedness in the disparate prior art teachings that would have prompted a person having ordinary skill in the art to combine the references to arrive at the claimed invention, we cannot affirm. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) ("Often, it will be necessary ... to look to interrelated teachings of multiple patents ... in order to determine whether there was an apparent reason to combine the known elements in the 5 Appeal2017-010199 Application 13/537,148 fashion claimed."); id. ("[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art."). IV. SUMMARY Rejections A through Dare not sustained. Therefore, the Examiner's decision to reject claims 1, 6, 7, 9, and 14-16 is reversed. REVERSED 6 Copy with citationCopy as parenthetical citation