Ex Parte Quitmann et al

Patent Trial and Appeal Board

Mar 4, 2016

13538861 (P.T.A.B. Mar. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/538,861 06/29/2012
66991 7590 03/07/2016
LAW OFFICE OF MICHAEL A, SANZO, LLC
15400 CALHOUN DR.
SUITE 125
ROCKVILLE, MD 20855
FIRST NAMED INVENTOR
Catharina Quitmann
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.
7601/10450CON 7869
EXAMINER
BARCENA, CARLOS
ART UNIT PAPER NUMBER
1724
MAILDATE DELIVERY MODE
03/07/2016 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 CATHARINA QUITMANN, ALFONS KARL,
MATTHIAS KATZER, KAI KRAUSS, and
MICHAEL STANYSCHOFSKY
Appeal2014--006888
Application 13/538,861
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 1 through 17, and 19. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
The subject matter on appeal is directed to a gas carbon black (gas
black) having a narrow aggregate size distribution, resulting in a high
1 Appellants identify the Real Party in Interest as Evonik Carbon Black
GmbH (Appeal Brief filed November 20, 2013 ("App. Br.") at 2.)
Appeal2014---006888
Application 13/538,861
absolute hue contribution in coatings applications. (Spec. 7, 11. 1--4.) A
narrow aggregate size distribution may be defined as a full width at half-
maximum (FWHM) to Dmode ratio of less than or equal to 0.6, or a ( d90-
d10)/dso ratio of less than or equal to 1.1. (Spec. 2, 11. 10-12, 19-21.) The
FWHM value is the width of the aggregate size distribution curve at half the
peak height, and the Dmode value is the peak (maximum) of the aggregate
size distribution curve. (Spec. 9, 11. 9-13.) The dio, dso, and d9o values are
the aggregate sizes determined from the cumulative curve with a volume
fraction of 10%, 50%, and 90%, respectively. (Spec. 9, 11. 13-15.)
Details of the appealed subject matter are recited in representative
claim 1 reproduced below from the Claims Appendix to the Appeal Brief.
1. Carbon black comprising an aggregate size distribution
with a ( d9o-d 1 o )/ dso ratio of less than or equal to 1.1 and a full
width at half-maximum (FWHM) to Dmode ratio of less than or
equal to 0.6 and wherein said carbon black is a gas black.
(App. Br. 13, Claims Appendix.)
The Examiner maintains the following grounds of rejection in the
Answer entered on March 26, 2014 ("Ans."):
1. Claims 1-15 under 35 U.S.C. § 103(a) as unpatentable over the
disclosure of U.S. Patent 6,358,487 Bl issued in the name of Omae et al. on
March 19, 2002 (hereinafter referred to as "Omae") in view of U.S. Patent
Application Publication 2003/0114350 Al published in the name of Schmitt
et al. on June 19, 2003 (hereinafter referred to as "Schmitt"); and
2. Claims 1, 2, 5-7, 10, 11, 14--17, and 19 on the ground of non-
statutory obviousness-type double patenting as unpatentable over claims 1,
2
Appeal2014---006888
Application 13/538,861
11, 16, and 18 of U.S. patent 8,236,274 issued in the name of Quitmann et
al. on August 7, 2012, (hereinafter referred to as "the '274 patent").
DISCUSSION
Upon consideration of the evidence on this appeal record and each of
Appellants' contentions, we find that a preponderance of the evidence
supports the Examiner's determination that one of ordinary skill in the art,
armed with the knowledge provided in the applied prior art, would have
been led to the subject matter recited in claims 1-15 within the meaning of
35 U.S.C. § 103(a). Accordingly, we sustain the Examiner's§ 103(a)
rejection of claims 1-15 for the reasons set forth in the Final Rejection and
the Answer. In addition, we sustain the Examiner's non-statutory
obviousness-type double patenting rejection of claims 1, 2, 5-7, 10, 11, 14--
17, and 19 because Appellants do not contest this rejection. We add the
discussion below primarily for emphasis and completeness.
Rejection of claims 1-15 under 35 U.S.C. § 103(a) as unpatentable over
Omae and Schmitt2
Appellants do not dispute the Examiner's finding that Omae discloses
carbon blacks used as pigments and fillers that have a sharp aggregate size
2 We limit our discussion to those claims separately argued, and claims not
separately argued stand or fall with the argued claims. 37 C.F.R.
§ 41.37(c)(l)(iv). Appellants argue claims 1-15 as a group on the basis of
claim 1. (See generally App. Br. 8-11.) Therefore, for the purposes of this
appeal, we select claim 1 as representative and decide the propriety of the
rejection based on this claim alone.
3
Appeal2014---006888
Application 13/538,861
distribution with a D112!Dmad ratio of at most 0.6. (Compare Final Act. 2-3
with App. Br. 10-12.) Omae discloses that the D112!Dmad ratio is the "ratio of
the half width of the stokes diameter at the point of the peak to the stokes
diameter at the point of the peak Dmad in the stokes diameter distribution of
aggregate," which corresponds to the definition provided in Appellants'
Specification for the full width at half-maximum (FWHM) to Dmode ratio
recited in claim 1. (Compare Omae col. 11, 11. 53-56 with Spec. 9, 11. 9-13).
The Examiner acknowledges that Omae does not expressly indicate that its
carbon blacks have a ( d90-d10)/dso ratio of less than or equal to 1.1, but
determines that its carbon blacks having a sharp aggregate size distribution
and a D112!Dmad ratio of at most 0.6 would have a ( d90-d10)/dso ratio of less
than or equal to 1.1. (Final Act. 2.) The Examiner also acknowledges that
Omae does not disclose gas blacks. (Id.)
To account for the latter deficiency, the Examiner finds, and
Appellants do not dispute, that Schmitt discloses furnace blacks, gas blacks,
and lamp blacks used as fillers and pigments that have a (dso-d20)/dso ratio of
less than or equal to 1.1. (Compare Final Act. 2-3 with App. Br. 10-12.)
The Examiner also finds that Schmitt's disclosure of such a ( dso-d20 )/ dso ratio
indicates its desire for carbon blacks having a narrow aggregate size
distribution consistent with Omae' s disclosure of "sharp" aggregate size
distribution. (Ans. 3.) The Examiner concludes that the combined
disclosures of Omae and Schmitt would have rendered obvious the optimal
4
Appeal2014---006888
Application 13/538,861
physical properties of gas blacks, used as fillers and pigments, such as their
narrow aggregate size distribution, as recited in claim 1. (Final Act. 3.)
Appellants argue that the Examiner's position that Schmitt provides a
definition for the "sharp" aggregate size distribution disclosed in Omae is
unfounded. (App. Br. 10-11.) Appellants contend that Schmitt does not use
the term "sharp", the Examiner has not shown that there is a generally
accepted meaning in the art for a "sharp" ratio, and the carbon black
particles disclosed in Schmitt are almost three orders of magnitude larger
than the particles disclosed in Omae, and thus one of ordinary skill in the art
would not have considered the aggregate size distribution disclosed in
Schmitt to be pertinent to the carbon blacks disclosed in Omae. (Id.)
However, we find Appellants' arguments unpersuasive and we agree with
the Examiner that the combined disclosures of Omae and Schmitt reasonably
would have suggested the claimed gas black having a narrow aggregate size
distribution.
Omae discloses carbon blacks that can be used as pigments and fillers
and have a "uniform aggregate" (the narrowest aggregate size distribution)
and a "sharp aggregate size distribution" with a D112!Dmad ratio of at most
0.6. (Omae col. 1, 11. 5-8; col. 7, 11. 23-39.) This disclosure of Omae would
have suggested carbon blacks having the narrow aggregate size
(substantially uniform) distribution defined as the ( d90-d10)/dso ratio of less
than or equal to 1.1 recited in claim 1. According to Omae, such uniform or
narrow aggregate size distribution allows carbon blacks to have "high
5
Appeal2014---006888
Application 13/538,861
blackness," and thus, the carbon blacks having such uniform or narrow
aggregate size distribution are advantageously used as pigments. (Omae col.
7, 11. 23-32.) Although Omae exemplifies carbon blacks produced in a
furnace (furnace blacks) by mixing a carbon black feed stock with a high
temperature combustion gas stream (Omae col. 10, 11. 33--44), which is
similar to the process disclosed in Appellants' Specification for producing
the claimed gas blacks (Spec. 3, 11. 1-14), Omae's disclosures regarding
carbon blacks, including Omae's teaching regarding the advantages of a
uniform or sharp aggregate size distribution, are not limited to any particular
type of carbon blacks. (Omae col. 7, 11. 23-32.) Thus, the carbon blacks
that Omae discloses to be useful as pigments and fillers are inclusive of the
gas blacks, furnace blacks, and lamp blacks that Schmitt discloses to be
useful interchangeably as pigments and fillers. (Schmitt i-fi-125, 26, 28.)
Schmitt discloses that such carbon blacks used as fillers also have a narrow
aggregate size distribution. (Schmitt i-fi-196-102, Table 3.) Therefore,
Omae' s disclosure of carbon blacks useful as pigments and fillers having a
uniform aggregate size distribution and a D112!Dmad ratio of at most 0.6,
which are inclusive of the gas blacks that Schmitt also discloses to be useful
as pigments and fillers, reasonably would have led one of ordinary skill in
the art, through no more than ordinary skill and creativity, to a gas black
having a uniform aggregate size distribution, such as a gas black having an
aggregate size distribution with a full width at half-maximum (FWHM) to
6
Appeal2014---006888
Application 13/538,861
Dmode ratio of less than or equal to 0.6, and a (d90-d10)/dso ratio of less than or
equal to 1.1, as recited in claim 1.
Appellants argue that Schmitt fails to disclose the type of carbon
black that yielded the dso, d2o, and dso values relied on by the Examiner, and
also argue that claim 1 recites d9o, dio, and dso values, rather than dso, d2o, and
dso values as disclosed in Schmitt. (App. Br. 11-12.) Appellants further
argue that the carbon black disclosed in Schmitt is not carbon black per se,
but is a combination of carbon black and additives. (App. Br. 12.)
However, Appellants' arguments are unpersuasive because they are
improperly based only on Schmitt, and do not take into account the
combined disclosures of Omae and Schmitt. In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986) ("Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references."); In re Keller, 642 F.2d 413, 425
(CCPA 1981) (The test for obviousness "is what the combined teachings of
the references would have suggested to those of ordinary skill in the art.")
As discussed above, the carbon blacks that Omae discloses to be useful as
fillers and pigments, which have a uniform aggregate size distribution and a
D112!Dmad ratio as claimed, are inclusive of the gas blacks that Schmitt also
discloses to be useful as pigments and fillers. Therefore, the combined
disclosures of Omae and Schmitt reasonably would have led one of ordinary
skill in the art, through no more than ordinary skill and creativity, to a gas
black having a uniform aggregate size distribution, such as the aggregate
7
Appeal2014---006888
Application 13/538,861
size distribution recited in claim 1, with a reasonable expectation of
successfully obtaining the advantages taught by Omae.
Accordingly, on this record, we are unpersuaded of reversible error in
the Examiner's determination that one of ordinary skill in the art at the time
of the invention would have been led to the carbon black of claim 1, and the
Examiner's conclusion that the subject matter of claims 1-15 therefore
would have been obvious over the disclosure of Omae in view of Schmitt.
Rejection of Claims 1, 2, 5-7, 10, 11, 14--17, and 19 for Obviousness-type
Double Patenting
Appellants do not contest the Examiner's rejection of claims 1, 2, 5-7,
10, 11, 14--1 7, and 19 on the ground of non-statutory obviousness-type
double patenting over claims 1, 11, 16, and 18 of the '274 patent. (App. Br.
7.) Accordingly, we summarily sustain this rejection. 37 C.F.R.
§ 41.37(c)(l)(iv); see also Manual of Patent Examining Procedure (MPEP)
§ 1205.02 (9th ed. Mar. 2014) ("If a ground of rejection stated by the
examiner is not addressed in the appellant's brief, appellant has waived any
challenge to that ground of rejection and the Board may summarily sustain
it, unless the examiner subsequently withdrew the rejection in the
examiner's answer.")
CONCLUSION
In view of the reasons set forth in the Final Action, Answer, and
above, we affirm the Examiner's§ 103(a) rejection of claims 1-15, and the
8
Appeal2014---006888
Application 13/538,861
Examiner's non-statutory obviousness-type double patenting rejection of
claims 1, 2, 5-7, 10, 11, 14--17, and 19.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
9