Ex Parte Henckel Von Donnersmarck et al

Patent Trial and Appeal Board

Nov 2, 2012

11630234 (P.T.A.B. Nov. 2, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/630,234 12/20/2006 Andreas Henckel Von Donnersmarck WSO-49139 2443
24131 7590 11/05/2012
LERNER GREENBERG STEMER LLP
P O BOX 2480
HOLLYWOOD, FL 33022-2480
EXAMINER
LEE, REBECCA Y
ART UNIT PAPER NUMBER
1734
MAIL DATE DELIVERY MODE
11/05/2012 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 ANDREAS HENCKEL VON DONNERSMARCK and
BERNDT BOHME
____________

Appeal 2011-008832
Application 11/630,234
Technology Center 1700
____________

Before BRADLEY R. GARRIS, MARK NAGUMO, and
KAREN M. HASTINGS, Administrative Patent Judges.

Opinion for the Board by GARRIS, Administrative Patent Judge.

Dissent by NAGUMO, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

This is in response to a Request for Rehearing, filed October 22, 2012,
of our Decision, mailed August 22, 2012, wherein the panel majority
affirmed the Examiner's decision rejecting all appealed claims 14-20 under
35 U.S.C. § 103(a) as unpatentable over Schoedon.

Appeal 2011-008832
Application 11/630,234

2
In essence, the panel majority agreed with the Examiner's fundamental
position that the 1-3 µm iron oxide particle sizes discarded by Schoedon
would be reasonably expected to have the lamellar structure required by sole
independent claim 14 (Dec. 2-3).
In their Request, Appellants argue that "their [Specification and
Declaration] evidence clearly establishes that the conventional milling
processes used before Appellants['] disclosure would have damaged the
lamellar structure in the small sized grains" (Req. 4) and that "[t]here is
absolutely no evidence in the record to support the Examiner's statement that
the small sized grains [of Schoedon] would retain their lamellar structure
even after undergoing such a milling process" (id.; emphasis deleted).
Appellants further argue that, contrary to the majority opinion, their
nonobviousness position is not contradicted by the Specification (id. at 6-8).
Appellants' arguments are unpersuasive.
Neither the Specification evidence nor the Declaration evidence
proffered by Appellants identifies with any specificity the conventional
milling processes which are said to damage the lamellar structure in small
sized grains. Accordingly, this evidence provides no support for the
proposition that the conventional milling process specifically used by
Schoedon (i.e., milling via a jaw crusher and a roller mill) would have
damaged the lamellar structure of the 1-3 µm iron oxide particles formed
during this process.
Moreover, Appellants are incorrect in contending that the record
contains no evidence supporting the Examiner's opposing proposition.
Appellants' own Specification disclosure provides evidence in support of the
Examiner's position. In particular, the Specification discloses that the
Appeal 2011-008832
Application 11/630,234

3
desired small-size iron oxide particles having a lamellar structure are
produced by conventional milling processes which include use of an impact
crusher such as a jet mill known per se (Spec. 7:15-21) and use of shearing
stress such as by means of a shear mill known per se (id. at 7:22-25). This
disclosure provides a reasonable basis for the Examiner's position that
Schoedon's conventional milling process using a jaw crusher and roller mill,
like Appellants' conventional milling process using an impact crusher for
example, would produce small-size iron oxide particles without damaging
the lamellar structure. The reasonableness of the Examiner's position is
reinforced by Appellants' disclosure that their specifically disclosed jet mill
and shear mill processes are merely exemplary (see, "such as" (id. at 7:19,
23)) and preferable (see, "[p]referably" (id. at 3:38)).
In summary, Appellants proffered evidence does not show that the
specific milling process of Schoedon would damage the lamellar structure of
the small-size iron oxide particles produced thereby whereas similarities
between the milling processes used by Appellants and by Schoedon (e.g.,
crusher milling processes) provide reasonable support for the Examiner's
position that Schoedon's conventional process, like Appellants' conventional
process, forms small-size iron oxide particles having the lamellar structure
required by claim 14.

For the above stated reasons, Appellants request is denied with respect
to making any changes to the majority decision.

DENIED
Appeal 2011-008832
Application 11/630,234

1
NAGUMO, Administrative Patent Judge, dissenting.
I continue to dissent, respectfully, for the reasons given in the dissent
to the original Opinion.

kmm