Ex Parte Fuchs

Patent Trial and Appeal Board

Jan 30, 2019

13060818 (P.T.A.B. Jan. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/060,818 05/24/2011 Thomas Fuchs
22852 7590 02/01/2019
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK A VENUE, NW
WASHINGTON, DC 20001-4413
UNITED ST A TES OF AMERICA
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.
07812. 0085-00000 2106
EXAMINER
ABU ALI, SHUANGYI
ART UNIT PAPER NUMBER
1731
NOTIFICATION DATE DELIVERY MODE
02/01/2019 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
following e-mail address(es):
regional-desk@finnegan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS FUCHS
Appeal2018-001689
Application 13/060,818
Technology Center 1700
Before GEORGE C. BEST, DONNAM. PRAISS, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1, 3-9, 17-21, 26, and 27. 3 We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
1 In this Decision, we refer to the Specification filed February 25, 2011
("Spec."), the Final Office Action dated December 30, 2016 ("Final Act."),
the Appeal Brief filed May 26, 2017 ("Appeal Br."), the Examiner's Answer
dated October 6, 2017 ("Ans."), and the Reply Brief filed December 5, 2017
("Reply Br.").
2 Appellant identifies the real party in interest as Center for Abrasives and
Refractories Research & Development C.A.R.R.D. GmbH. Appeal Br. 1.
3 Claims 10-14, 22, and 23 are withdrawn from consideration by the
Examiner as directed to a non-elected invention. Claim 16 was cancelled in
an amendment filed April 12, 2017. See Appeal Br. 5, 24 (Claims App.).
Appeal2018-001689
Application 13/060,818
The claims are directed to solid particles, such as corundum, melted
corundum, sintered corundum, zirconium corundum, silicon carbide, boron
carbide, cubic boron nitride, diamond and/or mixtures thereof that have a
coating that includes a polyol applied thereto. Spec. 1, 4.
Claim 1, reproduced below from the Claims Appendix of the Appeal
Brief, is illustrative of the claims on appeal.
1. Solid particles with improved processability in an
electrostatic field, the solid particles being selected from the
group consisting of corundum, melted corundum, sintered
corundum, zirconium corundum, silicon carbide, boron carbide,
cubic boron nitride, diamond, and mixtures thereof, which have
a surface treatment in the form of a coating, characterized in
that the coating comprises at least one polyol,
wherein the amount of polyol is 0.01 to 0.4% by weight
relative to the untreated solid particles; and
wherein the dust index of the solid particles is less than 1.
Appeal Br. 22 (Claims App.).
REJECTIONS
The Examiner maintains the following rejections under pre-AIA
35 U.S.C. § I03(a) on appeal (Final Act. 3---6; Ans. 2): 4
Rejection 1: Claims 1, 3, 4, 16, 26, and 27 over Starling
(US 2008/0172951 Al, published July 24, 2008) ("Starling");
Rejection 2: Claims 5, 6, 17, and 18 over Starling in view of Masin
(US 1,951,555, issued March 20, 1934); and
4 The Examiner's rejection of claim 16 and the proposed objection of
claim 16, should claim 4 be found allowable, are moot given that claim 16
was canceled in an amendment filed April 12, 2017.
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Application 13/060,818
Rejection 3: Claims 7-9 and 19-21 over Starling in view of Seth et
al. (US 8,021,449 B2, issued September 20, 2011) ("Seth").
DISCUSSION
After review of the cited evidence in light of the Appellant's and the
Examiner's opposing positions, we determine that Appellant has not
identified reversible error in the Examiner's rejections. Accordingly, we
affirm the rejections for the reasons set forth below, in the Final Office
Action, and in the Examiner's Answer.
Appellant's arguments focus on independent claim 1. Appellant's
arguments presented for claims 3-9, 17-21, 26, and 27 are essentially the
same as the arguments presented for claim 1. Compare Appeal Br. 18-20,
with Appeal Br. 10-18. Therefore, we limit our discussion to independent
claim 1, and dependent claims 3-9, 17-21, 26, and 27 will stand or fall with
claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Starling discloses a coated abrasive product
coated with a plasticizer, such as a polyol, as recited in claim 1. Final
Act. 3. According to Starling, its coated abrasive product is formed by
forming a slurry containing a particulate material, such as silicon carbide, a
liquid carrier, such as water, and a plasticizer, such as a polyol, in an amount
ranging from about 0.5 weight percent to about 5.0 weight percent, mixed
together followed by spray drying to form aggregates containing the
abrasive grit particles. Id.; Starling ,r,r 8, 12, 22, and 37-39. The Examiner
acknowledges that Starling fails to disclose the identical ranges of polyol
recited in Appellant's claim 1, but determines that Starling's description of
the polyol content ranging from about 0.5 weight percent to about 5.0 weight
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Application 13/060,818
percent is sufficiently "close" to the claimed polyol content to render the
claimed invention prima facie obvious. Final Act. 3. In support of this
position, the Examiner relies on MPEP § 2144.05 for the proposition that the
ranges are so close that one skilled in the art would have expected them to
have the same properties. Id.
Although the Examiner also acknowledges that Starling does not
disclose that its coated abrasive particles have a dust index of less than 1, the
Examiner takes the position that the claimed dust index naturally flows from
using Starling's coated abrasive product because Starling's product has a
substantially similar structure and chemical composition as the claimed
invention. Id.
Appellant argues that Starling fails to teach or suggest an "amount of
polyol [that] is 0.01 to 0.4% by weight relative to the untreated solid
particles," as required by the pending claims. Appeal Br. 13-16. Appellant
argues that the Examiner's determination that because the range of polyol
disclosed by Starling is "close" to the claimed range it would have been
prima facie obvious is inconsistent with the Federal Circuit's decision in
In re Patel, 566 F. App'x 1005, 1010 (Fed. Cir. 2014). Appeal Br. 14.
Appellant's arguments are not persuasive of reversible error. In Patel,
the Federal Circuit considered whether a claim limitation requiring between
26 and 80 weight percent of a first polymer was rendered prima facie
obvious by a prior art disclosure of 0.5 to 25 weight percent of that polymer.
Id. at 1007. The Federal Circuit stated that "a rejection based on ranges
approaching each other might well be appropriate where there is a teaching
in the prior art that the endpoints of the prior art range are approximate or
can be flexibly applied." Id. at 1010. Moreover, despite Appellant's
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Appeal2018-001689
Application 13/060,818
argument, the Federal Circuit teaches in Brandt that the "nonbinding holding
in Patel . .. does not stand for the proposition advanced by Appellants that a
claimed range and prior art range must overlap for an examiner to find a
prima facie case." In re Brandt, 886 F.3d 1171, 1177 (Fed. Cir. 2018).
Here, the Examiner finds that Starling discloses that the amount of
polyol in its mixture ranges from about 0.5 weight percent to about 5.0
weight percent. Final Act. 3 (citing Starling ,r,r 38-39). As the Examiner
explains, the use of the term "about" suggests some flexibility in the amount
of polyol disclosed by Starling. Ans. 3. Thus, based on Starling's
disclosure, one of ordinary skill in the art would have had a reason to use an
amount of polyol less than 0.5%. Appellant does not direct us to any
disclosure in Starling about limiting the polyol to amounts ranging from 0.5
weight percent to 5. 0 weight percent. Nor does Appellant direct us to
sufficient evidence to rebut the Examiner's finding that even if the ranges in
Starling and claim 1 do not overlap, the ranges are close enough such that
one skilled in the art would have expected them to have the same properties.
See Final Act. 3; Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775,
783 (Fed. Cir. 1985). In fact, Appellant's Specification teaches that solid
particles coated with an amount of polyol ranging from 0.001 to 5% by
weight, relative to the untreated solid particles, would be expected to have
the same properties, i.e., improved processability in an electrostatic field.
Spec. 4, ,r 3.
Appellant argues that the Examiner has failed to show that "solid
particles with improved processability in an electrostatic field" would have
been obvious over Starling. Appeal Br. 10-13. Similarly, Appellant argues
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Application 13/060,818
that the Examiner has not shown that the claimed dust index will necessarily
result from Starling's aggregate. Appeal Br. 16-18.
Appellant's arguments are not persuasive of reversible error. It is
well-settled that inherency cannot be established by mere probabilities or
possibilities. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). But
"[ w ]here ... the claimed and prior art products are identical or substantially
identical, or 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 his claimed product."
In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Based on this record, the
Examiner provided an adequate factual basis upon which to shift the burden
to the Appellant to come forward with evidence to show Starling's coated
abrasive product would not necessarily have improved processability in an
electrostatic field or have a dust index of less than 1, as required by claim 1.
Indeed, as discussed above, Appellant's Specification teaches that solid
particles coated with an amount of polyol ranging from 0.001 percent by
weight to 5 percent by weight, relative to the untreated solid particles
(e.g., Starlings' abrasive product coated with from about 0.5 weight percent
to about 5 weight percent polyol) would be expected to have the same
properties, i.e., improved processability in an electrostatic field. See In re
Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) ("[W]hen the PTO shows sound
basis for believing that the products of the applicant and the prior art are the
same, the applicant has the burden of showing that they are not.").
Appellant, however, does not provide such a showing.
In view of the foregoing, we sustain the rejections of claims 1, 3-14,
17-23, 26, and 27.
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Appeal2018-001689
Application 13/060,818
DECISION
The rejections of claims 1, 3-14, 17-23, 26, and 27 are 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
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