Ex Parte Lytle

Board of Patent Appeals and Interferences

Mar 19, 2004

10172933 (B.P.A.I. Mar. 19, 2004)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte DAVID B. LYTLE
__________
Appeal No. 2004-0778
Application No. 10/172,933
__________
ON BRIEF
__________
Before GARRIS, KRATZ, and JEFFREY T. SMITH, Administrative Patent
Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal which involves claims 1-10.
The subject matter on appeal relates to a method of making a
magnetically attractive coating composition consisting of the
steps of providing a paint and mixing iron particles with the
paint. Further details of this appealed subject matter are set
Appeal No. 2004-0778
Application No. 10/172,933
1 As indicated on page 4 of the brief, the claims on appeal
will stand or fall together. Accordingly, we will focus on
independent claim 1, which is the broadest claim before us, as
representing the rejected claims. See 37 CFR
§ 1.192(c)(7)(2003).
2
forth in representative independent claim 1 which reads as
follows:
1. A method of making a magnetically attractive coating
composition consisting of the steps of:
providing a paint; and
mixing iron particles with the paint to produce a mixture,
wherein the concentration of the iron particles in the mixture is
about 70 to about 85 wt.%.
The reference set forth below is relied upon by the examiner
as evidence of obviousness:
Deetz 5,843,329 Dec. 1, 1998
All of the appealed claims stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Deetz.1
We refer to the brief and reply brief and to the answer for
a complete exposition of the contrary viewpoints expressed by the
appellant and by the examiner concerning the above noted
rejection.
OPINION
For the reasons set forth in the answer and below, we will
sustain this rejection.
Appeal No. 2004-0778
Application No. 10/172,933
3
The only argued distinction of the appealed claims over
Deetz relates to mixing iron particles only with the paint as
required by the claims before us by virtue of the closed
independent claim language “consisting of the steps of.”
According to the appellant, Deetz’s corresponding mixing step
involves a wetting agent or emulsifier to assist in dispersing
the iron particles in the paint. Thus, it is the appellant’s
basic position that the Deetz patent contains no teaching or
suggestion of mixing iron particles only with the paint.
On the other hand, it is the examiner’s fundamental position
that Deetz teaches or at least would have suggested mixing iron
particles only in the paint via the disclosure at lines 59-63 in
column 4 wherein patentee teaches adding such particles directly
to paint followed by a teaching of preferred embodiments wherein
a wetting agent or emulsifier is used to assist in dispersing the
particles. The appellant responds to the examiner’s position by
arguing that this column 4 disclosure is inconsistent with the
reference as a whole which, in the appellant’s view, “actually
teaches away from using only iron particles” (reply brief, pages
3-4). We cannot agree with the appellant.
Patentee’s column 4 teaching that iron particles may be
added directly to paint is explicit and unambiguous. While this
Appeal No. 2004-0778
Application No. 10/172,933
4
teaching may relate to a non-preferred embodiment, it is well
established that an applied reference may be relied upon to
establish obviousness under 35 U.S.C. § 103 not only for the
preferred embodiments disclosed therein but for all that it would
have reasonably suggested to one having ordinary skill in the
art. Merck & Co. v. Biocraft Labs., 874 F.2d 804, 807, 10 USPQ2d
1843, 1846 (Fed. Cir. 1989). In view of this legal principle, we
are convinced that Deetz teaches or at least would have suggested
mixing iron particles only with paint as required by the appealed
claims. The appellant’s opposing arguments including the
aforementioned “teaching away” argument lack persuasive merit
because they are contrary to the explicit and unambiguous column
4 teaching of Deetz.
In light of the foregoing, it is our determination that the
reference evidence adduced by the examiner establishes a prima
facie case of unpatentability which the appellant has failed to
rebut with argument and/or evidence of patentability. We shall
sustain, therefore, the examiner’s section 103 rejection of all
appealed claims as being unpatentable over Deetz. See In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992).
Appeal No. 2004-0778
Application No. 10/172,933
5
The decision of the examiner is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
Bradley R. Garris )
Administrative Patent Judge )
)
)
)
Peter F. Kratz ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Jeffrey T. Smith )
Administrative Patent Judge )
BRG:tdl
Appeal No. 2004-0778
Application No. 10/172,933
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Julie W. Meder
700 Koppers Building
436 Seventh Avenue
Pittsburgh, PA 15219-1818