Ex Parte Henckel Von Donnersmarck et al

Patent Trial and Appeal BoardNov 2, 2012

11630234 (P.T.A.B. Nov. 2, 2012)

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. 11/630,234 12/20/2006 Andreas Henckel Von Donnersmarck WSO-49139 2443 24131 7590 11/05/2012 LERNER GREENBERG STEMER LLP P O BOX 2480 HOLLYWOOD, FL 33022-2480 EXAMINER LEE, REBECCA Y ART UNIT PAPER NUMBER 1734 MAIL DATE DELIVERY MODE 11/05/2012 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 ANDREAS HENCKEL VON DONNERSMARCK and BERNDT BOHME ____________ Appeal 2011-008832 Application 11/630,234 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, MARK NAGUMO, and KAREN M. HASTINGS, Administrative Patent Judges. Opinion for the Board by GARRIS, Administrative Patent Judge. Dissent by NAGUMO, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING This is in response to a Request for Rehearing, filed October 22, 2012, of our Decision, mailed August 22, 2012, wherein the panel majority affirmed the Examiner's decision rejecting all appealed claims 14-20 under 35 U.S.C. Â§ 103(a) as unpatentable over Schoedon. Appeal 2011-008832 Application 11/630,234 2 In essence, the panel majority agreed with the Examiner's fundamental position that the 1-3 Âµm iron oxide particle sizes discarded by Schoedon would be reasonably expected to have the lamellar structure required by sole independent claim 14 (Dec. 2-3). In their Request, Appellants argue that "their [Specification and Declaration] evidence clearly establishes that the conventional milling processes used before Appellants['] disclosure would have damaged the lamellar structure in the small sized grains" (Req. 4) and that "[t]here is absolutely no evidence in the record to support the Examiner's statement that the small sized grains [of Schoedon] would retain their lamellar structure even after undergoing such a milling process" (id.; emphasis deleted). Appellants further argue that, contrary to the majority opinion, their nonobviousness position is not contradicted by the Specification (id. at 6-8). Appellants' arguments are unpersuasive. Neither the Specification evidence nor the Declaration evidence proffered by Appellants identifies with any specificity the conventional milling processes which are said to damage the lamellar structure in small sized grains. Accordingly, this evidence provides no support for the proposition that the conventional milling process specifically used by Schoedon (i.e., milling via a jaw crusher and a roller mill) would have damaged the lamellar structure of the 1-3 Âµm iron oxide particles formed during this process. Moreover, Appellants are incorrect in contending that the record contains no evidence supporting the Examiner's opposing proposition. Appellants' own Specification disclosure provides evidence in support of the Examiner's position. In particular, the Specification discloses that the Appeal 2011-008832 Application 11/630,234 3 desired small-size iron oxide particles having a lamellar structure are produced by conventional milling processes which include use of an impact crusher such as a jet mill known per se (Spec. 7:15-21) and use of shearing stress such as by means of a shear mill known per se (id. at 7:22-25). This disclosure provides a reasonable basis for the Examiner's position that Schoedon's conventional milling process using a jaw crusher and roller mill, like Appellants' conventional milling process using an impact crusher for example, would produce small-size iron oxide particles without damaging the lamellar structure. The reasonableness of the Examiner's position is reinforced by Appellants' disclosure that their specifically disclosed jet mill and shear mill processes are merely exemplary (see, "such as" (id. at 7:19, 23)) and preferable (see, "[p]referably" (id. at 3:38)). In summary, Appellants proffered evidence does not show that the specific milling process of Schoedon would damage the lamellar structure of the small-size iron oxide particles produced thereby whereas similarities between the milling processes used by Appellants and by Schoedon (e.g., crusher milling processes) provide reasonable support for the Examiner's position that Schoedon's conventional process, like Appellants' conventional process, forms small-size iron oxide particles having the lamellar structure required by claim 14. For the above stated reasons, Appellants request is denied with respect to making any changes to the majority decision. DENIED Appeal 2011-008832 Application 11/630,234 1 NAGUMO, Administrative Patent Judge, dissenting. I continue to dissent, respectfully, for the reasons given in the dissent to the original Opinion. kmm