Ex Parte Munchow

Board of Patent Appeals and Interferences

Jun 2, 2010

10193902 (B.P.A.I. Jun. 2, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DIETER MUNCHOW
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Appeal 2009-013242
Application 10/193,902
Technology Center 1700
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Decided: June 2, 2010
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Before EDWARD C. KIMLIN, CHUNG K. PAK, and TERRY J. OWENS,
Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claim 19. Claim 20, which is the only other pending claim,
stands objected to as dependent from rejected claim 19 but allowable if
rewritten in independent form. We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2009-013242
Application 10/193,902

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The Invention
The Appellant claims a method for making a composition for use in
papermaking. Claim 19 is as follows:
19. A method for preparation of coating compound for
the paper industry, comprising:
obtaining raw natural calcium carbonate fillers and raw
pigments of a basic grade as solids having a mean grain
diameter (D50) of 2 µm to 10 µm from suppliers of
raw materials;
milling said raw natural calcium carbonate fillers and raw
pigments in an aqueous phase in-situ at the paper mill to obtain
a self-prepared pigment slurry comprising 2-60% fillers and
pigments by weight having a desired particle size with a grain
distribution of from 10 to 99 % by weight of particles <1 µm,
respectively based on the equivalent diameter; and
employing said self-prepared pigment slurry for the
preparation of a coat for paper coating or in the paper stock.
The Reference
Boos (as translated) DE 2,346,269 Mar. 27, 1975
The Rejection
Claim 19 stands rejected under 35 U.S.C. § 103 over Boos.
OPINION
We affirm the rejection.
Issue
Has the Appellant indicated reversible error in the Examiner’s
determination that Boos would have rendered prima facie obvious, to one of
ordinary skill in the art, obtaining natural calcium carbonate having a mean
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grain diameter (D50) of 2 to 10 µm from raw material suppliers and milling
the natural calcium carbonate in situ at a paper mill to obtain a slurry
comprising 2-60 wt% fillers and pigments with a grain distribution of from
10 to 99 wt% of particles < 1µm?
Findings of Fact
Boos discloses a process for preparing finely divided calcium
carbonate dispersions which can be used as a coating paint in papermaking
(p. 2). Boos teaches that dried calcium carbonate having grain sizes below
5 µm, especially below 2 µm, cannot be completely rewetted with water
without difficulty despite the use of dispersing agents, and that preparing
finely divided calcium carbonate by precipitation has numerous
disadvantages (p. 3). So, Boos homogenizes coarse grained or coarsely
precipitated calcium carbonate (grain size range 10-200 µm, preferably 20-
100 µm) in water containing a dispersing agent, which causes some size
reduction, and then comminutes the grains by wet milling to form a grain
size distribution wherein, for example, 50 wt% of the grains are 1 µm or
smaller (pp. 4, 8).
Analysis
The Appellant argues that the only calcium carbonate Boos uses to
form the finely divided calcium carbonate dispersions is coarsely
precipitated calcium carbonate (Br. 6-14; Reply Br. 2-3).
Boos forms the finely divided calcium carbonate from “coarse-grained
or coarsely precipitated calcium carbonate” (p. 4). Boos teaches that the
grain size distribution of the calcium carbonate to be homogenized and
comminuted by wet milling “can be achieved, inter alia, by suitable
precipitation conditions” (p. 4). The “inter alia” would have indicated to one
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of ordinary skill in the art that the calcium carbonate to be homogenized and
comminuted by wet milling is not limited to calcium carbonate obtained by
precipitation but, rather, can be “coarse-grained” calcium carbonate obtained
by a technique other than precipitation. The Appellant acknowledges that
both ground calcium carbonate and precipitated calcium carbonate were
used in the papermaking art to impart different properties to the finished
paper product (Br. 6, 13). Thus, the techniques for obtaining coarse-grained
calcium carbonate to which Boos would have led one of ordinary skill in the
art through no more than ordinary creativity include grinding natural
calcium carbonate, provided that the calcium carbonate is not ground to a
size below 2 µm which, Boos indicates, renders rewetting of the grains
difficult and tedious (p. 3). See KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (In making an obviousness determination one “can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ”). Boos, therefore, would have rendered prima facie obvious,
to one of ordinary skill in the art, the Appellant’s mean grain diameter of
2 µm to 10 µm (claim 19).
Accordingly, we are not persuaded by the Appellant’s argument that
“the starting material of Boos has a grain size range of 10 to 200 µm which
fails to meet the claimed mean grain size of 2 to 10 µm” (Reply Br. 4; see
also Br. 15, 19). Boos’ 10 to 200 µm grain size range is merely a
particularly suitable range (p. 4). Hence, Boos would not have limited one
of ordinary skill in the art to that range. Moreover, one of ordinary skill in
the art would have appreciated that milling 2-10 µm particles which, as
claim 19 indicates, were available from raw material suppliers, would have
required less milling than milling larger particles.
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The Appellant argues that Boos’ milled calcium carbonate, after
dilution, contains at most 60 w% solids (p. 4), whereas the Appellant’s
claim 19 requires 2-60 wt% fillers (Reply Br. 5-6).
The ranges of the Appellant and Boos overlap at 60 wt%, and such an
overlapping range is evidence of prima facie obviousness. See In re
Malagari, 499 F.2d 1297, 1303 (CCPA 1974).
The Appellant argues that Boos does not disclose a milled calcium
carbonate grain size distribution of from 10 to 99 wt% of particles < 1 µm
(Br. 16).
Boos discloses milled calcium carbonate having a grain size
distribution within that range, i.e., 50 wt% of particles having a size of 1 µm
or less, 30 wt% of particles having a size of 0.5 µm or less, and 15 wt% of
particles having a size of 0.2 µm or less (p. 8).
The Appellant argues that Boos teaches that the milled dispersion can
be shipped over a large distance (p. 6), whereas the Appellant’s claim 19
requirement of milling in situ at the paper mill avoids such shipping (Br. 18-
20; Reply Br. 7).
“A person of ordinary skill is also a person of ordinary creativity, not
an automaton.” KSR, 550 U.S. at 421. One of ordinary skill in the art,
through no more than ordinary creativity, would have appreciated the
tradeoff between shipping a product from its place of manufacture to a
destination, thereby eliminating the cost of shipping the product’s
components to the destination and making the product there, versus shipping
the product’s components to the destination and making the product there,
thereby eliminating the cost of making the product elsewhere and shipping it
to the destination.
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Conclusion of Law
The Appellant has not indicated reversible error in the Examiner’s
determination that Boos would have rendered prima facie obvious, to one of
ordinary skill in the art, obtaining natural calcium carbonate having a mean
grain diameter (D50) of 2 to 10 µm from raw material suppliers and milling
the natural calcium carbonate in situ at a paper mill to obtain a slurry
comprising 2-60 wt% fillers and pigments with a grain distribution of from
10 to 99 wt% of particles < 1µm.
DECISION/ORDER
The rejection of claim 19 under 35 U.S.C. § 103 over Boos is
affirmed.
It is ordered that the Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

kmm

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