Ex Parte Erickson et al

Patent Trial and Appeal Board

May 25, 2016

13227924 (P.T.A.B. May. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/227,924 09/08/2011
32692 7590 05/27/2016
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
Dwight D. Erickson
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.
63511US010 6498
EXAMINER
PARVIN!, PEGAH
ART UNIT PAPER NUMBER
1731
NOTIFICATION DATE DELIVERY MODE
05/27/2016 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 DWIGHT D. ERICKSON, SCOTT R. CULLER,
NEGUS B. ADEFRIS, JOHN T. BODEN, and JOHN D. HAAS
Appeal2014-005945
Application 13/227 ,924
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1-17, 19, and 20. We have jurisdiction over the appeal pursuant to 35
U.S.C. § 6(b ).
We REVERSE.
Appeal2014-005945
Application 13/227,924
THE INVENTION
Appellants' invention is directed to an abrasive comprising a plurality
of alpha alumina abrasive shards having an abrasives industry specified
nominal grade (Spec., 2:25-26).
Claim 1 is illustrative:
An abrasive comprising: a plurality of alpha alumina abrasive
shards having an abrasives industry specified nominal grade or
a nominal screened grade, the plurality of alpha alumina
abrasive shards comprising a first precisely formed surface, a
second precisely formed surface intersecting with the first
precisely formed surface at a molded angle a, a third surface
opposite the first precisely formed surface, and a fractured
surface that propagates between the first precisely formed
surface and the opposing third surface.
(App. Br. 11 (Claims Appendix) emphasis added)
Appellants appeal the following rejection: 1
Claims 1-17, 19, and 20 are rejected under 35 U.S.C. § 103(a) as obvious
over Berg (U.S. Patent 5,984,988 issued Nov. 16, 1999).
FINDINGS OF FACT AND ANALYSIS
The Examiner's findings are located on pages 2-5 of the Answer.
Appellants argue that Berg fails to teach or suggest an abrasive
comprising a fractured surface (28) that propagates between the first
precisely formed surface (22) and the opposing third surface (26) as required
by claim 1 (App. Br. 7; Fig. 1). Appellants argue that the passage of Berg
that is relied upon by the Examiner (col. 7, lines 34--45) at most teaches or
suggests that the outer edges of the particles that were adjacent the mold
1 The Examiner withdrew a rejection under 35 U.S.C. § 112, second
paragraph, of claims 1-17, 19, and 20 (Ans. 11-12).
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Appeal2014-005945
Application 13/227,924
surfaces may have edges that are broken off so that the edges on the outer
surface of the particles may be broken and rounded (App. Br. 7).
We begin our analysis by construing the claim language "a fractured
surface that propagates between the first precisely formed surface and the
opposing third surface." The Examiner determines that the claim language
is a product-by-process limitation which only limits the claim by the
structure imparted to the abrasive shard by the process used to form it (Ans.
12). Appellants contend that the disputed claim phrase imparts structural
limitations (Reply Br. 3).
The Specification describes that fractured surface 28 generally
propagates between the first precisely formed surface 22 and the opposing
third surface 26 and between opposing side walls of the mold cavity 32
when the cavity depth is relatively small compared to the area of the bottom
surface 30 (Spec., 6:4-7). Figure 5 shows that fractured edge 28 (the jagged
edge to the right in the figure) extends between the first precisely formed
surface (i.e., the gray portion facing the viewer) and the opposing third
surface (i.e., the surface on the other side of the abrasive shard that is
contiguous with the second precisely formed surface via the white side edge
in the figure and the fractured edge on the right hand portion of the pictured
shard) (Fig. 5; Spec., 6: 17-23). The Figure 5 photograph shows an actual
abrasive shard depicted by the schematic representation in Figure 1 where an
abrasive shard in a mold cavity 32 has a fractured surface 28 that propagates
between the first precisely formed surface 22 and the opposing third surface
26. The fractured surface is described as "characterized by sharp, jagged
points typical of a brittle fracture" (Spec., 6:7-8).
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Appeal2014-005945
Application 13/227,924
Based upon these disclosures, we determine that the disputed claim
language requires an abrasive shard having a fractured surface that extends
from the first precisely formed surface to the opposing third surface. In
other words, the claim requires a fractured surface having sharp, jagged
points typical of a brittle fracture that spans the entire thickness of the
abrasive shard.
The Examiner finds that Berg's teaching that the mold cavities used to
form the abrasive particles "approximately" correspond to desired
dimensions of the abrasive particles means that the edges of the abrasive
particles will be uneven and resemble a fractured surface (Ans. 3). The
Examiner further finds that Berg teaches that some of the edges of the
abrasive particles may break off or become rounded during removal from the
mold, which would constitute a fractured surface (Id.). The Examiner finds
that the abrasive shard may have any shape including a shape having more
than three surfaces (Id. at 4). The Examiner finds that "while the particles
are made obvious to have more than 3 surfaces, and while it has been
rendered obvious for them to have fractured surfaces, it is clear that one of
these more than 3 surfaces propagates between two other surfaces (Id.).
The Examiner's findings regarding the fractured surface do not
establish that Berg teaches or would have suggested that the fractured
surface propagates between the first precisely formed surface and the
opposing third surface as that claim phrase is construed in light of the
Specification. Although the Examiner finds that Berg's teaching that the
abrasive particle may be any shape and may only approximate the size of the
mold, it is not clear if the portion of the abrasive particle that does not
exactly form to the mold has sharp, jagged points typical of a brittle
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Appeal2014-005945
Application 13/227,924
fractured surface. The Examiner has not satisfied the initial burden of
showing that Berg teaches a fractured surface that propagates between a first
precisely formed surface and an opposing third surface. Indeed, Berg seeks
to avoid forming cracks in the abrasive particles which indicates that Berg
may tolerate incidental chipping or breaking of the edges, but not the desired
full-thickness cracking (i.e., a fractured surface along an entire side of an
abrasive shard) sought and claimed by Appellants (col. 7, 11. 9-11, 39--41,
44--45; col. 9, 11. 65-67).
While the Examiner finds that Berg teaches that edge pieces may
break off and constitute a fractured surface, the Examiner does not find that
the broken off surfaces propagate between a first precisely formed surface
and an opposing third surface (i.e., along an entire side of an abrasive shard).
Rather, Berg teaches at column 7, lines 41--42 that "some of the abrasive
particle edges may break off or become rounded." Berg does not teach that
the broken piece propagates from one surface of the abrasive particle (i.e., a
first precisely formed surface) to an opposing surface of the abrasive
particle. Rather, it appears that the edges are portion of the abrasive where a
side surface of the shard and a top or bottom surface meet. Our
understanding is supported by Berg disclosure that edges break off or
become rounded. A rounding of the edges means that the sharper joint
where the top and side surface of the abrasive meet is removed to form a
gentler, rounding of the joint (i.e., edge). The Examiner provides no
findings regarding where or how Berg teaches that the fractured surface
propagates from a first precisely formed surface to an opposing third surface
with regard to Berg's column 7 disclosure.
On this record, we cannot sustain the Examiner's§ 103 rejections.
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Appeal2014-005945
Application 13/227,924
DECISION
The Examiner's decision is reversed.
ORDER
REVERSED
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