Ex Parte MonroeDownload PDFPatent Trial and Appeal BoardAug 31, 201813495593 (P.T.A.B. Aug. 31, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/495,593 06/13/2012 32692 7590 09/05/2018 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 UNITED ST A TES OF AMERICA FIRST NAMED INVENTOR Larry D. Monroe 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. 68251US002 3867 EXAMINER MORGAN, EILEEN P ART UNIT PAPER NUMBER 3723 NOTIFICATION DATE DELIVERY MODE 09/05/2018 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 LARRY D. MONROE Appeal 2017-011256 Application 13/495,593 Technology Center 3700 Before BRETT C. MARTIN, JEREMY M. PLENZLER, and LEE L. STEPINA, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from the Examiner's rejection of claims 1-5, 7-13, and 16-21. Claims 14, 15, and 22-27 were withdrawn from consideration and claim 6 was cancelled during prosecution. Br. 3, 7. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2017-011256 Application 13/495,593 THE INVENTION Appellant's claims are directed generally "to abrasive particles and methods of making the same." Spec. 1, 1. 8. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. Abrasive particles, wherein each of the abrasive particles comprises an alpha-alumina crystalline phase and from 0.25 to 20 percent by weight of a beta-alumina crystalline phase, based on the total weight of the alpha-alumina crystalline phase and the beta-alumina crystalline phase combined, wherein the beta- alumina crystalline phase is represented by the empirical formula (X)(Q)Alio017, wherein: X is selected from the group consisting of Sr and Ba; and Q is selected from the group consisting of Mg, Co, Ni, and Zn, and wherein the abrasive particles are free of rare earth oxide. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Erickson EP O 603 715 Al June 29, 1994 REJECTION The Examiner made the following rejection: Claims 1-5, 7-13, and 16-21 stand rejected under 35 U.S.C. § I03(a) as being unpatentable over Erickson. Final Act. 2. ANALYSIS The Examiner finds that Erickson teaches all aspects of the claimed invention, but fails to specifically teach that the compound is free of rare earth oxide ("REO"). Final Act. 2-3. Appellant does not dispute the Examiner's findings other than to argue that Erickson is not free of REO 2 Appeal 2017-011256 Application 13/495,593 because it requires at least 0.01 % REO and that "rare earth oxide is a required element to practice the invention of' Erickson. Br. 5. We agree with the Examiner's findings and conclusions as well as the rebuttal to Appellant's arguments and adopt them as our own. See Ans. 3-5. In summary, the Examiner is correct that Erickson does not require REO, but merely states that in "typical applications, improvement will be found if the base grit material is provided with sufficient amounts of' REO. Ans. 3, emphasis omitted (citing Erickson 5, 11. 41--42). The Examiner is also correct that Appellant's Specification explains that anything below 1 % REO is considered "essentially free" of REO and so Erickson's teaching of REO as low as 0.01 % can be considered nominal for purposes of the invention. Ans. 4 (citing Spec. 5, 11. 20-25). We agree with the Examiner that adjusting from 0.01 % to O "would have been a slight variation that would not produce an unexpected outcome and would have therefore constituted an obvious mechanical expedient at the time of applicants' invention." Ans. 4. The Examiner's reliance on Clear Value Inc. v. Pearl River Polymers Inc., 668 F.3d 1340 is also on point. Ans. 5. As the Examiner states, "Appellant has not shown any criticality between 0-0.9% REO," nor can Appellant show such criticality given the statement that anything below 1 % may be considered "essentially free" of REO. Id. Accordingly, we are not apprised of error in the Examiner's rejection. DECISION For the above reasons, we AFFIRM the Examiner's decision to reject claims 1-5, 7-13, and 16-21. 3 Appeal 2017-011256 Application 13/495,593 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.I36(a)(l)(iv). AFFIRMED 4 Copy with citationCopy as parenthetical citation