Ex Parte Frahm et al

Patent Trial and Appeal Board

Sep 22, 2017

12472498 (P.T.A.B. Sep. 22, 2017)

United States Patent and Trademark Office
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.
12/472,498 05/27/2009 Heiko Frahm 0550221.00022 7796
20873 7590 09/26/2017
T nrke T nrH T T P
EXAMINER
Attn: IP Docketing
2200 Ross Avenue
GOFF II, JOHN L
Suite # 2800 ART UNIT PAPER NUMBER
DALLAS, 1A /jZUl-b/ /b 1746
NOTIFICATION DATE DELIVERY MODE
09/26/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HEIKO FRAHM, JOERG FRIEDRICH,
MARK KAMINSKI, ERWIN SCHMEIER,
LYDIA DREWS-NICOLAI, and VOLKER JUERGENS
Appeal 2016-001515
Application 12/472,4981
Technology Center 1700
Before CATHERINE Q. TIMM, BRIAN D. RANGE, and JANE E.
INGLESE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 3—16, 18, and 19. We have jurisdiction under 35
1 According to Appellants, the real party in interest is Kronos International,
Inc. Appeal Br. 1.
Appeal 2016-001515
Application 12/472,498
U.S.C. § 6(b). An oral hearing was held September 18, 2017.2 We
REVERSE.
STATEMENT OF THE CASE3
Appellants describe the invention as relating to a method of coating
inorganic solid particles. Spec. 12. In particular, the invention relates to
coating titanium dioxide pigment particles with a smooth, homogeneous
silicon dioxide skin. Id. The coating may modify the particles’ properties
such as abrasion resistance, surface charge, dispersing properties, acid or
light resistance. Id. at 13. The particles may be used as tinting pigments for
plastics, coatings such as paints, and/or laminates. Id. at 133. Claim 1,
reproduced below with formatting added for readability and emphasis added
to certain key recitations, is illustrative of the claimed subject matter:
1. A method for coating inorganic solid particles, including
titanium dioxide particles, in an aqueous suspension with
at least one coating substance, comprising:
a) disagglomeration of the solid particles contained in
the aqueous suspension in a mill,
b) adding a water-soluble precursor of the coating
substance to the suspension,
c) immediately following step b) homogenization of
the suspension in a dispersing machine, to form a slurry
where the temperature and pH value of the suspension
do not change significantly in steps a) to c),
2 A written transcript of the oral hearing will be entered into the record when
the transcript is made available.
3 In this opinion, we refer to the Final Office Action dated August 14, 2014
(“Final Act.”), the Appeal Brief filed April 17, 2015 (“Appeal Br.”), the
Examiner’s Answer dated September 10, 2015 (“Ans.”), and the Reply Brief
filed November 9, 2015 (“Reply Br.”).
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Application 12/472,498
d) precipitation of the coating substance onto the
surface of the particles following homogenization of the
suspension in the dispersing machine and,
e) separating of the solid particles from the
suspension.
Appeal Br. 11 (Claims App’x).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Brand
Ott et al.
(hereinafter “Ott ’470”)
Ott et al.
(hereinafter “Ott ’793”)
Diebold et al.
(hereinafter “Diebold”)
US 4,199,370
US 5,356,470
US 5,653,793
US 5,993,533
Apr. 22, 1980
Oct. 18, 1994
Aug. 5, 1997
Nov. 30, 1999
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1, 3—13, 15, 16, 18, and 19 under 35 U.S.C.
§ 103 as unpatentable over Diebold in view of Ott ’793 or Ott ’470. Ans. 2.
Rejection 2. Claim 14 under 35 U.S.C. § 103 as unpatentable over
Diebold in view of Ott ’793 or Ott ’470 and further in view of Brand. Id.
at 7.
ANALYSIS
Independent claims 1 and 18 each generally recite steps of (a)
disagglomeration, (b) adding a precursor, and (c) homogenizing the
suspension “where the temperature and pH value of the suspension do not
change significantly in steps a) to c).” Appeal Br. 11—13 (Claims App’x).
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Application 12/472,498
The Examiner finds that Diebold suggests steps (a), (b), and (c), but Diebold
heats the slurry significantly4 after deagglomeration and before adding the
precursor and homogenizing. Ans. 2. The Examiner relies on the Ott
references as teaching a “conventionally known process of deagglomerating
a slurry of titanium dioxide particles” and finds that the Ott references teach
deagglomeration of a slurry after dilution “to a desired percent solids of the
final slurry product.” Id. at 3^4. The Examiner concludes that it would have
been obvious to employ Ott ’793 or Ott ’470 to further disagglomerate after
Diebold’s steps (b) adding precursor and (c) homogenizing “to improve a
number of properties including further narrowing the particle size
distribution.” Id.
Appellants argue that the Examiner has not adequately provided a
basis as to why one of ordinary skill in the art at the time of the invention
would have combined Ott’s disaggomeration with the Diebold process after
Diebold’s heating step. Appeal Br. 4. In particular, Appellants argue that
Ott teaches a solids concentration from 70—73% solids and thus provides no
reason to dilute Diebold’s slurry which is already 24—33% solids. Id. at 4—5
(citing Ott ’793, Diebold, and the June 10, 2014, declaration of Dr. Heiko
Frahm); see also Reply Br. 3. Appellants also argue that Diebold only
teaches further dilution in its examples and argue that those examples are not
comparable to claims 1 or 18 because they involve a pH change. Appeal Br.
8—9. If there is no relevant teaching of a further dilution, this undermines
the Examiner’s rationale for further disagglomeration. See Ans. 3
4 We note that the Specification defines a “significant” change in
temperature as more than 10° C. Spec. 122.
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Application 12/472,498
(explaining that Ott teaches further disagglomeration after dilution to a
desired percent solids).
Appellants also argue that Diebold teaches starting materials that are
highly deagglomerated with size “in the range of about 100 to about 500
nm.” Appeal Br. 6 (citing Diebold 3:10—15). In contrast, Ott discloses final
particles in which preferably less than 10—20% of the particles are greater
than 0.6 microns. Id. (citing Ott 5:63—67). Thus, a person of skill in the art
would be inclined, based on the teachings of Diebold, to apply Ott’s
disaggolmeration at the beginning of the Diebold process rather than after
heating. Id. The Examiner states that Diebold does not teach starting
particles between 100 to 500 nm but merely teaches this as a preference.
Ans. 8. The Examiner does not adequately explain why this is a distinction.
Moreover, Diebold suggests that it is using “base Ti02 particles [that] are
commercially manufactured” and indicates those same “base TiCE particles”
preferably have the 100 to about 500 nm size. Diebold 1:7—18. Because
Diebold teaches starting with particles that are already at least as small as the
end size taught by Ott, the evidence relied on in this appeal does not indicate
that a person of skill in the art would be inclined to further disagglomerate
particles at a later point of the Diebold process. Appeal Br. 6-7; Reply Br. 3.
Because the preponderance of the evidence does not support the
Examiner’s position that it would have been obvious for a person of skill in
the art to modify Diebold to include a disagglomeration step after heating,
we do not sustain the Examiner’s rejection of claims 1 or 18. See, e.g., In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
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Application 12/472,498
support the legal conclusion of obviousness.”). We also do not sustain the
Examiner’s rejection of the remaining pending claims because those claims
each depend from claims 1 or 18.
DECISION
For the above reasons, we reverse the Examiner’s rejection of claims
1,3-16, 18, and 19.
REVERSED
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