Ex Parte Duescher

Board of Patent Appeals and Interferences

Sep 22, 2009

10824107 (B.P.A.I. Sep. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte
WAYNE O. DUESCHER
____________

Appeal 2009-007054
Application 10/824,107
Technology Center 1700
____________

Decided: September 22, 2009
____________

Before JEFFREY T. SMITH, MICHAEL P. COLAIANNI, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Statement of the Case
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 2-21. (Final Office Action, mailed
Appeal 2009-007054
Application 10/824,107

December 29, 2006). Claims 1 and 22-31 have been withdrawn from
consideration. We have jurisdiction under 35 U.S.C. § 6(b).1
Appellant’s invention relates to a process for making abrasive
media. (Spec. 1). Claim 2 is illustrative:
2. A process of making spherical beads comprising:
a) using a cell sheet wherein the cell sheet has a [sic] array of cell
sheet through holes;
b) the cell sheet through holes each have a cross sectional area;
c) the cell sheet having a nominal thickness;
d) the cell sheet holes form cell sheet volumes wherein a cell sheet
volume is equal to the cell sheet through hole cross sectional area
multiplied by the cell sheet thickness;
e) mixing materials into a liquid solution, the mixture solution
comprising an inorganic oxide or a combination of inorganic
oxides, and water, solvents or a combination thereof;
f) filling the cell sheet holes with the liquid mixture solution to
form mixture volumes wherein the volume of mixture solution
contained in each mixture volume is equal to the cell sheet volume;
g) ejecting the liquid mixture volumes from the cell sheet by
subjecting the liquid mixture solution contained in each cell to an
impinging jet of fluid wherein the impact of the impinging jet of
fluid dislocates the liquid mixture volumes from the cell sheet
thereby forming independent mixture solution lump entities;
h) wherein the ejecting independent liquid mixture solution lump
entities are shaped into independent spherical entities by force
comprising liquid mixture solution surface tension forces;
i) the independent spherical entities are introduced into and
subjected to a solidification environment wherein the independent
spherical entities become solidified to form loose, green, spherical
beads; and

1 In rendering this decision we have considered Appellant’s Brief dated
October 25, 2007. An oral hearing was held on September 15, 2009.
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j) firing the loose, green, spherical beads at high temperatures to
produce beads.

Appellant appeals the Examiner's rejections as set forth below:
1) Claims 2, 3, 6, 8, 11, 12, 15 and 17 under 35 U.S.C § 102(b) as
anticipated by Berg (5,984,988, issued November 16, 1999).2
2) Claims 4 and 13 under 35 U.S.C. § 103(a) as unpatentable over
the combined teachings of Berg and Howard (3,916,584, issued November
4, 1975).
3) Claims 5 and 14 under 35 U.S.C. § 103(a) as unpatentable over
the combined teachings of Berg and Eisenberg (4,393,021, issued July 12,
1983).
4) Claims 7 and 16 under 35 U.S.C. § 103 (a) as unpatentable over
the combined teachings of Berg, Culler (6,521,004, issued February 18,
2003) and the Quadro Engineering Incorporated Comil® product
description.
5) Claims 9 and 10 under 35 U.S.C. § 103(a) as unpatentable over
the combined teachings of Berg and Mathews (3,838,998, issued October
1, 1974).
6) Claim 18 under 35 U.S.C. § 103(a) as unpatentable over the
combined teachings of Berg and Cai (Phys Rev. Lett. 2202
Dec:89(23):235501).

2 In support of this rejection the Examiner also cited Zhai et. al., "Influence
of rheological behavior of aqueous A12O3lNano-TiO2 slurry on the
characteristics of powders prepared by spray pelletization", Materials
Science and Engineering A 392 (2005) pp. 1-7.
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7) Claims 19 and 20 under 35 U.S.C. § 103(a) as unpatentable over
the combined teachings of Berg and Culler.
8) Claim 21 under 35 U.S.C. § 103(a) as unpatentable over the
combined teachings of Berg and Ramanath (5,834,569, issued November
10, 1998).
The dispositive issue before us is whether the Examiner has
established that Berg describes ejecting liquid mixture from a cell sheet by
subjecting the liquid mixture solution to an impinging jet of fluid, wherein
the liquid mixture solution are shaped into independent spherical entities
by force comprising liquid mixture solution surface tension forces as
recited in independent claims 2 and 11. We answer this question in the
negative. Therefore, WE REVERSE.3
The Examiner bears the initial burden of presenting a prima facie
case of anticipation or obviousness. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992). In order to establish a prima facie case of obviousness,
the Examiner must show that each and every limitation of the claim is
described or suggested by the prior art or would have been obvious based
on the knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d
1071, 1074 (Fed. Cir. 1988)). “[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (quoted with approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007).

3 We select claims 2 and 11 as representative of the rejected subject matter.
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The Examiner found that Berg teaches a method of manufacturing
abrasive particles having predetermined shapes. The Examiner (Ans. 19-
20) summarized the rejection on appeal as follows:
Since the teachings of Berg (US 5,984,988) as evidenced by Zhai
et. al. is [sic] central to each of the contested art rejections, the key
findings set forth by Berg and the resulting basis for the art rejection
of claims under 35 U.S.C. 102(b) are here summarized. In short, Berg
teaches;
1) A mold or cell sheet having an array of through holes and each
hole having a cross sectional area and a "nominal thickness".
2) A dispersion is prepared comprising a liquid solution of inorganic
oxides and water to prepare a liquid solution.
3) The array of through holes is filled with the liquid solution to
form entrained mixture volumes.
4) A portion of the liquid is evaporated from the entrained
dispersion, however even in the most extreme scenario presented
by Berg the mixture volumes still contain approximately 30%
water by weight. Since liquid water was initially added to the
inorganic powder to form the mixture volumes, said mixture
volumes would be rightfully construed as "liquid mixture
volumes". Similarly, since water remains in the mixture volumes
after this partial dehydration step, the partially dehydrated
mixture volumes are likewise considered, in the broadest
reasonable interpretation of the term, to be “liquid mixture
volumes”.
5) These liquid mixture volumes are ejected from the cell sheet by
application of a pressure or an "impinging jet".
6) Berg discloses that after ejection “some of the edges may become
rounded”. In the absence of any compelling evidence to the
contrary, it is the Examiners position that this rounding effect
occurs at least in part due to surface tension forces. In
combination with the Berg teaching of truncated spherical or
truncated spherical geometries for the particles, the Berg process
is understood to provide for ejected, independent liquid mixture
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solution entities having a spherical shape which are subject to
surface tension forces.
7) The entities are dried outside of the mold or equivalently
subjected to a solidification environment.
8) The dried entities are ultimately subjected to a sintering process to
produce sintered beads.
The reference to Zhai is pointed to in this rejection simply to
provide supporting evidence that high solids (e.g. up to 70% by mass
alumina in water) content slurries of very closely related, albeit not
identical composition, are subject to deformation by surface tension
forces. Restated, the rejection as presented does not turn upon the
disclosure provided by Zhai, however, said reference does provide
further supporting evidence for the action of surface tension upon the
ejected “liquid mixture volumes”.

Appellant contends, and we agree, that the dispersion of Berg is
dried (solidified) prior to removal from the mold cavity. Specifically
Appellants states “[t]he product of Berg that is dried to at most 30% water
is more than just dried [it] is required to be gelled by the process before
expulsion from the mold.” (Br. 15). Appellant also asserts that Berg,
column 7, discloses the dispersion is solidified prior to removal from the
mold cavity. Berg, column 7 lines 1-45 is reproduced below:
The fourth step of the process of this invention involves removing a
portion of the liquid, i.e. the volatile component thereof, from the
dispersion while the dispersion is in the mold cavity, thereby
resulting in an increase in the viscosity of the dispersion. It is
preferred that the volatile component be removed by evaporation
rather than by an external force such as filtration. Removal of liquid
by evaporation can occur at room temperature or at elevated
temperatures. The elevated temperatures can range from about 40°
C. to about 300° C. However, at higher temperatures, high drying
rates are obtained that produce undesirable cracks in the resulting
abrasive particle. It is preferred to heat the mold containing the
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dispersion at a temperature of from about 50°C. to about 80° C. for
from about 10 to about 30 minutes in a forced air oven. A sufficient
amount of the volatile component must be removed from the
dispersion to bring about solidification thereof, thereby forming a
precursor of an abrasive particle having approximately the same
shape as the shape of the mold cavity. It is preferred that a sufficient
amount of volatile component be removed from the dispersion so
that the precursors of the abrasive particles can be easily removed
from the cavities of the mold. Typically, up to 40% of the liquid is
removed from the dispersion in this step. At this point the
precursors of the abrasive particles are sufficiently nonsticky that
they will not stick to one another when they are removed from the
mold.

The fifth step of the process of this invention involves removing
the precursors of the abrasive particle from the mold cavities. This
step is made possible by shrinkage of the dispersion, when the liquid
is removed therefrom. For example, it is not uncommon for the
dispersion to shrink 20% or more. The precursors of the abrasive
particles can be removed from the mold cavities either by gravity or
by applying a low pressure to force them out of the cavities.

The removed precursors of the abrasive particles have
approximately the same shape as the cavities of the mold from
which they were formed. Exact replication is unlikely for three
reasons. First, the dispersion will shrink, so the precursors of the
abrasive particles will be smaller. Second, when the precursors of
the abrasive particles are removed from the mold cavities, some of
their edges may break off or become rounded. Third, when the
dispersion is introduced in the cavities, the dispersion may not
completely fill the cavities. It should be noted that care should be
taken throughout the process to minimize the foregoing factors.
(Emphasis added)

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The Examiner contends that Berg teaches ejecting dispersions from
the cell sheet that contains an appreciable amount of the initial water
content. (Ans. 6-7). While the composition of Berg may contain an
amount of initial water content, the Examiner has not established that this
ejected composition is a dispersion. Berg discloses an abrasive precursor
is formed by removal of the volatile components from the dispersion to
bring about solidification. Berg also discloses removal of the abrasive
particle precursors from the mold is made possible by shrinkage of the
dispersion, when the liquid is removed therefrom. As is apparent from the
discussion, reproduced above, Berg discloses placing a dispersion into a
mold that undergoes transformation toward solidification to form an
abrasive particle precursor. The abrasive particle precursor achieves
sufficient solidity to shrink within the mold cavity and retain the
characteristics of the mold. As acknowledged by the Examiner, Answer
20, the abrasive particle precursor of Berg is sufficiently solid such that
during ejection from the mold some of the edges of the particle precursors
may become rounded. The Examiner has not established that Berg's
abrasive particle precursor is the same as the liquid mixture solution
required by the claimed invention. The Examiner citation to Zhai does not
necessarily establish that Berg's abrasive particle precursor is the same as
the liquid mixture solution required by the claimed invention.
The prior art references relied upon in the §103 rejections were not
provided to address this difference between Berg and the claimed
invention. Consequently, the additional cited prior art references are
insufficient to establish obviousness of the claimed subject matter.
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For the foregoing reasons and those presented in Appellants’ Briefs,
the rejections of claims 2-21 under §102 and §103 as set forth above are
reversed.

ORDER
The Examiner's decision rejecting claims 2-21 is reversed.

REVERSED

tc

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