Ex Parte Viloria et al

Patent Trial and Appeal Board

Feb 19, 2015

12415389 (P.T.A.B. Feb. 19, 2015)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/415,389 03/31/2009 Alfredo Viloria 08-200 2626
34704 7590 02/20/2015
BACHMAN & LAPOINTE, P.C.
900 CHAPEL STREET
SUITE 1201
NEW HAVEN, CT 06510
EXAMINER
NGUYEN, COLETTE B
ART UNIT PAPER NUMBER
1732
MAIL DATE DELIVERY MODE
02/20/2015 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 ALFREDO VILORIA, MONICA ROMAN,
MARVIN RICAURTE, YANINE GONZALEZ, RAFAEL
YOLL, and MARCOS ROS-BRUSSIN
________________

Appeal 2013-000642
Application 12/415,389
Technology Center 1700
________________

Before CHUNG K. PAK, CHARLES F. WARREN, and
TERRY J. OWENS, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appellants request rehearing of our Decision mailed November 28,
2014 (“Dec.”), affirming the Examiner’s rejection of claims 1, 2, 7, 16, 17
and 18 under 35 U.S.C. § 103 as unpatentable over the combined disclosures
of Schneider and Flytzani-Stephanopoulos. Request for Rehearing filed
January 28, 2015 (“Req. Reh’g”) at 1–3. Appellants do not question our
Decision affirming claim 14 under 35 U.S.C. § 103 as unpatentable over the
disclosure of Schneider or affirming claims 19 and 20 under 35 U.S.C. § 103
as unpatentable over the combined disclosures of Schneider, Flytzani-
Stephanopoulos, and Siriwardane. Req. Reh’g 1–3.
Appellants first contend that we erred in determining that Flytzani-
Stephanopoulos would have suggested employing mixed oxide or iron oxide
Appeal 2013-000642
Application 12/415,389

2
powders having a particles size less than 75 microns as recited in claims 1,
2, 7, 16, 17 and 18. Id. In support of this contention, Appellants focus on
Flytzani-Stephanopoulos’ Table 1 showing one preferred combination of
coarse and fine metal oxide particles having a particles size distribution
ranging from less than 63 micrometers to 210 micrometers, with 30 to 65%
of the particle sizes being less than 75 micrometers. Id.; Flytzani-
Stephanopoulos, col. 5, ll. 11–27 which includes Table 1. In so doing,
Appellants fail to identify any error in our finding that Flytzani-
Stephanopoulos, at column 2, lines 42–45, broadly teaches coarse and fine
mixed oxide or iron oxide particles having a wide particle size distribution,
with the coarse particles being selected from those having a particles size
ranging from 60 to 250 micrometers and the fine particles being selected
from those having a particle size of less than 60 micrometers.1 Compare
Req. Reh’g 1–3 with Dec. 6; In re Lamberti, 545 F.2d 747, 750 (CCPA
1976) (“[T]he fact that a specific [embodiment] is taught to be preferred is
not controlling, since all disclosures of the prior art, including unpreferred

1 We note that Flytzani-Stephanopoulos’ preferred combination of coarse
and fine metal oxide particles having a particle size distribution from less
than 63 micrometers to 210 micrometers discussed supra is consistent with
this broader teaching of using coarse and fine mixed metal oxide or iron
oxide particles selected from those having a fine size less than 60
micrometers and those having a coarse size ranging from 60 to 250
micrometers at column 2, lines 42–45, of Flytzani-Stephanopoulos. We also
note that Appellants do not request that our affirmance of this rejection be
designated as a new ground of rejection. 37 C.F.R. § 41.50 (c) (2012)(“Any
request to seek review of a panel’s failure to designate a new ground of
rejection in its decision must be raised by filing a request for rehearing as set
forth in §41.52. Failure of appellant to timely file such a request for
rehearing will constitute a waiver of any arguments that a decision contains
an undesignated new ground of rejection.”)
Appeal 2013-000642
Application 12/415,389

3
embodiments, must be considered.”) In other words, Appellants have not
contested our finding that the broader disclosure in Flytzani-Stephanopoulos
would have suggested employing coarse and fine iron oxide particles having
a wide particle size distribution ranging from 60 to 74 micrometers (coarse
particles) to less than 60 micrometers (fine particles) in forming a
compacted or molded composition. Compare Dec. 6–7 with Req. Reh’g 1–
3; In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)(“In cases involving
overlapping ranges, we and our predecessor court have consistently held that
even a slight overlap in range establishes a prima facie case of
obviousness.”); In re Boesch, 617 F.2d 272, 276 (CCPA 1980)(“[D]iscovery
of an optimum value of a result effective variable…is ordinarily within the
skill of the art.”) Nor have Appellants contested our finding that
“Appellants have not shown that the particular iron oxide particle size
recited in claim 1 is critical.” Compare Dec. 7 with Req. Reh’g 1–3.
Appellants also contend that we misapprehended the scope of the
limitation of claim 1 which is said to require “all particles to be less than 75
microns.” Req. Reh’g 2–3. However, Appellants do not identify any part of
our Decision to show that we erred in interpreting claim 1. Id. Regardless
of whether claim 1 is interpreted as requiring all the iron oxide particles or
iron mineral particles employed to be less than 75 microns or as requiring
any and all metal oxide particles employed to be less than 75 microns as
alleged by Appellants, we determine that the collective teachings of
Schneider and Flytzani-Stephanopoulos would have suggested employing
mixed metal oxide or iron oxide particles having such a particle size
distribution as explained at page 6 of the Decision and above. Compare
Dec. 6 with Req. Reh’g 2–3.
Appeal 2013-000642
Application 12/415,389

4
In conclusion, based on the foregoing, we have granted Appellants’
Request for Rehearing to the extent that we have reconsidered our Decision,
but we deny Appellants’ request to make any change therein.

DENIED

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