Ex Parte Rao

Board of Patent Appeals and Interferences

Apr 23, 2010

10631954 (B.P.A.I. Apr. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte M. VIKRAM RAO
__________

Appeal 2009-004573
Application 10/631,954
Technology Center 1700
___________

Decided: April 23, 2010
___________

Before ADRIENE LEPIANE HANLON, PETER F. KRATZ, and
MARK NAGUMO, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from an Examiner’s decision
rejecting claims 1-17 under 35 U.S.C. § 102(e) as anticipated by Dejaiffe.1,2
We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

1 Claims 18-59 are also pending but have been withdrawn from
consideration. Final Office Action dated May 12, 2006, at 1.
2 US 6,913,643 B2 to Dejaiffe issued July 5, 2005.
Appeal 2009-004573
Application 10/631,954

Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. Particulates comprising silica, an aluminum oxide in an
amount of less than about 25%, and at least one void, the
particulates having a specific gravity of less than about 2.2, a
particle size of 8 U.S. Mesh or smaller, and a substantially
spherical shape.

App. Br., Claims Appendix.3
B. ISSUES4
(1) Has the Appellant identified reversible error in the Examiner’s
finding that particulates produced by the process disclosed in Dejaiffe
inherently have a “substantially spherical shape” and a size of “8 U.S. Mesh
or smaller” as recited in claim 1?
(2) Has the Appellant identified reversible error in the Examiner’s
finding that particulates produced by the process disclosed in Dejaiffe
inherently have a size of “25 U.S. mesh or smaller” as recited in claim 6?
C. FINDINGS OF FACT
1. Appellant’s Specification
According to the Appellant’s Specification, the particulates of the
present invention comprise combustion products of carbonaceous materials,
such as oil, wood, garbage, sewage, hydrocarbons, coal, and the like.
Typically, such combustion products suitable for use in the present invention

3 Appeal Brief dated January 10, 2007.
4 The Appellant argues claims 1-5, 7-14, 16, and 17 as a group and claims 6
and 15 as a group. Thus, for purposes of this appeal, claims 2-5, 7-14, 16,
and 17 stand or fall with the patentability of claim 1 and claim 15 stands or
falls with the patentability of claim 6. 37 C.F.R. § 41.37(c)(1)(vii) (2009).
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Application 10/631,954

comprise from about 30 to 70 percent by weight silica and from about 5 to
about 25 percent by weight aluminum oxides. Spec., para. [016].
The Appellant discloses that “[w]hen such combustion products are
pelletized and sintered, they produce particulates that are substantially
spherical and that exhibit specific gravities of below about 2.2.” Spec., para.
[025].
The Appellant discloses that low specific gravities are the result of
controlling the percentages of metal oxides in the final particulate. Spec.,
para. [018].
The Appellant defines the term “spherical” as “having an average
ratio of minimum diameter to maximum diameter of about 0.7 or greater.”
Spec., para. [025].
2. Dejaiffe
Dejaiffe discloses a glass material comprising 51-65 weight percent
silica and 8-14 weight percent alumina. Dejaiffe 4:5-10.
Existing high temperature waste processing systems are used to
formulate the disclosed glass material. Dejaiffe 4:20-22.
According to Dejaiffe, a wide variety of waste materials that are
currently disposed of in industrial landfills and/or hazardous waste disposal
facilities can be successfully incorporated into the disclosed glass material.
Dejaiffe 3:45-52, 4:32-46.
Dejaiffe discloses that the glass material is suitable for use as a
lightweight aggregate. Dejaiffe 3:36-38.
The lightweight aggregate can be formed in large and small sizes.
Dejaiffe 4:66-5:1.
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Application 10/631,954

Smaller sized lightweight aggregate is formed as follows:
To form smaller sized lightweight aggregate, which is
aggregate having a closed cell structure and approximately the
size of sand, the glass is either pelletized, or spray dried,
followed by firing in open flame in a manner similar to perlite
expansion.

Dejaiffe 5:8-12.
The Examiner found, and the Appellant does not dispute, that the
typical dimension for sand is about 50 µm to 2 mm. Ans. 3, Attachments
1A, 1B.5
The Examiner found, and the Appellant does not dispute, that 8 U.S.
Mesh is about 2.38 mm particle size and 25 U.S. Mesh is about 710 µm
particle size. Ans. 8-9, Attachment 2.
D. PRINCIPLES OF LAW
Where the claimed and prior art products are produced by identical or
substantially identical processes, the PTO can require an applicant to prove
that the prior art products do not necessarily or inherently possess the
characteristics of the claimed product. Whether the rejection is based on
“inherency” under 35 U.S.C. § 102 and/or “prima facie obviousness” under
35 U.S.C. § 103, the burden of proof is the same, and its fairness is
evidenced by the PTO’s inability to manufacture products or to obtain and
compare prior art products. In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
“[I]nherent anticipation does not require that a person of ordinary skill
in the art at the time would have recognized the inherent disclosure.”
Schering Corp. v. Geneva Pharmaceuticals, 339 F.3d 1373, 1377 (Fed. Cir.
2003).

5 Examiner’s Answer dated July 28, 2008.
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E. ANALYSIS
The Examiner found that the processes used to produce the claimed
particulates and the small aggregates in Dejaiffe are substantially the same.
In particular, the Examiner found that the Appellant and Dejaiffe both
pelletize and sinter a similar combustion product to form particulates. Thus,
the Examiner found that the small aggregates in Dejaiffe inherently have a
“substantially spherical shape” as recited in claim 1. Ans. 3-4.
The Examiner’s findings are supported by a preponderance of the
evidence on the record before us. That is, the Appellant and Dejaiffe
produce similar products that are processed in a similar manner, i.e.,
pelletized and sintered. Thus, the burden properly shifted to the Appellant to
establish that the small aggregates produced by the process disclosed in
Dejaiffe do not inherently have a “substantially spherical shape.”
In response, the Appellant argues that “the processes of sintering and
pelletization may produce aggregates of all different shapes, which may or
may not be substantially spherical.” App. Br. 5. For support, the Appellant
directs our attention to an article by Randall M. German6 and US
3,125,794.7 Id.
Significantly, the German article and the Reynolds patent do not
disclose a process similar to the Appellant’s process or the process disclosed
in Dejaiffe. In particular, the Examiner correctly points out that the German
article does not discuss pelletizing and the Reynolds patent is directed to
molding pellets from a ribbon. Ans. 6-7; see also Reynolds 3:12-17

6 Randall M. German, Sintering Theory and Practice 258-60 (John Wiley &
Sons, Inc. 1996). Hereinafter “German article.”
7 US 3,125,794 to Reynolds issued March 24, 1964. Hereinafter “Reynolds
patent.”
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(employing a molding sleeve to mold the pellets). Thus, the Appellant’s
evidence is not sufficient to establish error in the Examiner’s finding of
inherency.
The Appellant also argues that Dejaiffe does not disclose particulates
having a particle size of “8 U.S. Mesh or smaller” as recited in claim 1 or a
particle size of “25 U.S. mesh or smaller” as recited in claim 6. App. Br. 8.
Significantly, the Appellant does not dispute the Examiner’s finding
that the small aggregates disclosed in Dejaiffe are “the size of sand” which is
as small as 50 µm. Ans. 3; see also Dejaiffe 5:8-12. According to the
record before us, particles as small as 50 µm are smaller than 8 U.S. Mesh
and smaller than 25 U.S. Mesh. Ans. 8-9, Attachment 2. Thus, we find that
Dejaiffe describes small aggregates having a size within the scope of claims
1 and 6. Moreover, the Appellant has not come forward with credible
evidence showing that sand would not be expected to meet the Appellant’s
definition of “spherical,” i.e., have “an average ratio of minimum diameter
to maximum diameter of about 0.7 or greater.” See Spec., para. [025].
F. DECISION
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 C.F.R. § 1.136(a).

AFFIRMED

tc
ROBERT A. KENT
P.O. BOX 1431
DUNCAN, OK 73536
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