Ex Parte Petry

Patent Trial and Appeal Board

Nov 30, 2012

10183854 (P.T.A.B. Nov. 30, 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.
10/183,854 06/26/2002 Volker Petry W9530-02 1322
7590 11/30/2012
Charles A. Cross
W.R. Grace & Co.-Conn.
Patent Dept.
7500 Grace Drive
Columbia, MD 21044-4098
EXAMINER
SZEKELY, PETER A
ART UNIT PAPER NUMBER
1761
MAIL DATE DELIVERY MODE
11/30/2012 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 VOLKER PETRY
______________

Appeal 2011-003589
Application 10/183,854
Technology Center 1700
_______________

Before CHARLES F. WARREN, PETER F. KRATZ, and
HUBERT C. LORIN, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicant appeals to the Board from the final rejection of claims 1, 2
and 4-19. We have jurisdiction. 35 U.S.C. §§ 6 and 134(a) (2002);
37 C.F.R. § 41.31(a) (2009).
We reverse the decision of the Primary Examiner.
Claims 1 and 13, as they stand of record in the Amendment filed July
30, 2007 (see Ans. 31), illustrates Appellant’s invention of a plurality of
“discreet” inorganic oxide particulates comprising a coating of an organic
material and an antioxidant and/or inhibitor (claim 1), and a method of

1 We considered the Examiner’s Answer mailed August 5, 2010.
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elevating autoignition temperatures of a plurality of “discreet” inorganic
oxide particulates, and are representative of the claims on appeal:
1. A plurality of discreet [sic] inorganic oxide particulates comprising
a coating of organic material wherein said organic material is present in an
amount of at least 10% by weight based on the weight of inorganic oxide
and an antioxidant and/or inhibitor, wherein the particulates at a given
volume have an auto-ignition temperature which is at least 20ºC higher than
the auto-ignition temperature of base particulates, the base particulates being
the particulates and organic material without an antioxidant or inhibitor.
13. A method of elevating auto-ignition temperatures of a plurality of
discreet [sic] inorganic oxide particulates comprising a coating of organic
material in an amount of at least 10% by weight based on the weight of
inorganic oxide, the method comprising including anti-oxidant or inhibitors
with the organic material-containing inorganic oxide in order to raise the
auto-ignition temperature of the particulates at least 20ºC higher than the
auto-ignition temperature of the particulates without the antioxidant or
inhibitor.
Appellant requests review of the grounds of rejection advanced on
appeal by the Examiner: claims 1, 2 and 4-19 under 35 U.S.C. § 102(b or e)
over each of Ferrigno (US 4,420,341), Salyer (US 5,477,917), Trotoir (US
5,516,814), Luers (US 6,294,505 B1) or Drummond (US 6,593,400 B1); and
claims 1, 2 and 4-19 under 35 U.S.C. § 103(a) over Ferrigno, Salyer, Trotoir,
Luers or Drummond with Giessler (US 6,270,692 B1). Br. 10;2 Ans. 4.
OPINION
I.
We interpret the language of representative claims 1 and 13 by giving
the terms thereof the broadest reasonable interpretation consistent with the
Specification as it would be interpreted by one of ordinary skill in the art.

2 We numbered the pages of the Brief filed January 24, 2009, as it appears
in the electronic records of the USPTO.
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See, e.g., In re Suitco Surface, Inc., 603 F.3d 1255, 1259-60 (Fed. Cir. 2010)
(“claim language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art”) (quoting In re Bond, 910 F.2d
831, 833 (Fed. Cir. 1990) (quoting In re Sneed, 710 F.2d 1544, 1548 (Fed.
Cir. 1983)); In re Translogic Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir.
2007) (“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.”) (quoting In re
Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)); In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997) (“[I]t would be unreasonable for the PTO to ignore
any interpretive guidance afforded by the applicant’s written description.”).
With respect to the preambular language “a plurality of discreet [sic]
inorganic oxide particulates” in both claims 1 and 13, we find that the term
“particulate” is defined in the Specification as “solid, either singularly or a
collection of spheroids, fragments, or pieces of matter.” Spec. 3:18-20; see
Br. 9. The term “discreet” does not fit the context since the customary
dictionary meaning of the term describes certain human behavior, and we
find, based on the claim language as a whole and in light of the Specification
as well as Appellant’s arguments (Br., e.g., 12), that the term “discrete,”
which has the customary dictionary meaning in context of “[c]onsisting of
unconnected distinct parts,”3 was intended instead. Thus, for purposes of
addressing the merits of the grounds of rejection of claims 1 and 13, we will
consider these claims as if the term “discrete” was used because we can do
so without speculation, recognizing that our conditional interpretation does
not limit these claims. Cf. In re Steele, 305 F.2d 859, 862-63 (CCPA 1962);

3 See, e.g., discreet, discrete, The American Heritage Dictionary of the
English Language 516 (2000).
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Ex parte Saceman, 27 USPQ2d 1472, 1474 (BPAI 1993).
Accordingly, we determine that claims 1 and 13 include a plurality of
separate, unconnected inorganic oxide particulates each of which comprises
at least “a coating of organic material . . . present in an amount of at least
10% by weight based on the weight of inorganic oxide,” without limitation
on the kind of organic material or on the upper end of the amount present.
In this respect, Appellant discloses that the “organic material . . . can be one
or at least two of a number of organic compounds typically combined with
or used to coat or treat particulate inorganic oxides, especially inorganic
oxides which have been particulated.” Spec. 4:15-19. We find that
Appellant thus discloses that “coating” a particulate inorganic oxide is
different than “combining” or “treating” the particulate inorganic oxide.
Accordingly, we determine that the term “coating” is used in claims 1 and
13 in its ordinary dictionary meaning in context of “[a] layer of a substance
spread over a surface.”4
We determine product claim 1 specifies that the organic material
coated discrete inorganic oxide particulates have an antioxidant and/or
inhibitor as part of the coating, and method claim 13 specifies that the
antioxidant or inhibitor becomes a part of the coated particulate by
“including” it in any manner in the coated particulates, including in the
coating as specified in claim 1. We determine that it is clear from the
language of each of claims 1 and 13 that the antioxidant and/or inhibitor
must be of a kind and present in the coated particulate in an amount that
provides an “auto-ignition temperature” which is “at least 20ºC higher than

4 See, e.g., coating, The American Heritage Dictionary of the English
Language 354 (2000).
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Application 10/183,854
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the auto-ignition temperature” of the coated particulates without an
antioxidant or inhibitor. Spec. 13:14 to 14:6; see also 15:11-19.
II.
A.
The Examiner must establish a prima facie case of anticipation under
§ 102 by showing, as a matter of fact, that all elements arranged as specified
in product claim 1 and method claim 13 are disclosed within the four corners
of each of Ferrigno, Salyer, Trotoir, Luers and Drummond, either expressly
or inherently, in a manner enabling one skilled in the art to practice an
embodiment of the claimed product and of the claimed method without
undue experimentation. ClearValue, Inc. v. Pearl River Polymers, Inc., 668
F.3d 1340, 1344 (Fed. Cir. 2012) (quoting Am. Calcar, Inc. v. Am. Honda
Motor Corp., 651 F.3d 1318, 1341 (Fed. Cir. 2011) (citing In re Gleave, 560
F.3d 1331, 1334 (Fed. Cir. 2009)); Therasence, Inc. v. Becton, Dickinson
and Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (“The way in which the
elements are arranged or combined in the claim must itself be disclosed,
either expressly or inherently, in an anticipatory reference.”); Sanofi-
Synthelabo v. Apotex Inc., 550 F.3d 1075, 1083 (Fed, Cir. 2008).
“The concept of ‘inherent disclosure’ does not alter the requirement
that all elements must be disclosed in an anticipatory reference in the same
way as they are arranged or combined in the claim.” Therasense, 593 F.3d
at 1332-33, and cases cited therein. An anticipatory reference must
necessarily include an unstated claim limitation because inherency may not
be established by probabilities or possibilities, and thus “[t]he mere fact that
a certain thing may result from a given set of circumstances is not
sufficient.” Therasense, 593 F.3d at 1332-33 (citing Cont’l Can Co. USA
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Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (quoting In re
Oelrich, 666 F.2d 578, 581 (CCPA 1981)).
Where a reference does not expressly disclose a claim limitation, the
Examiner bears the burden of establishing that, as a matter of fact, it
reasonably appears the limitation is inherently described by the reference.
See, e.g., In re Best, 562 F.2d 1252, 1254-56 (CCPA 1977).
On this record, we agree with Appellant that the Examiner erred in not
carrying the burden of establishing, as a matter of fact, that each of Ferrigno,
Salyer, Trotoir, Luers and Drummond, as relied on by the Examiner in the
Answer, describes to one skilled in the art an embodiment of a coated
discrete inorganic oxide particulates containing an antioxidant and/or
inhibitor which is of a kind and in an amount that provides the coated
discrete inorganic oxide particulates with an “auto-ignition temperature”
which is “at least 20ºC higher than the auto-ignition temperature” of the
coated particulates without an antioxidant or inhibitor, such that the
embodiment falls within claims 1 and 13 even though each of the references
is silent with respect to this specified property. Br. 12-15; Ans. 4-6. Indeed,
the Examiner simply dismisses the claimed auto-ignition temperature
limitation as “inherent in the composition” of the references without
explaining why this is so with respect to the particular inorganic oxide
particulates disclosed in each reference. Ans. 5.
Accordingly, in the absence of a prima facie case of anticipation, we
reverse the rejection of claims 1, 2 and 4-19 over each of Ferrigno, Salyer,
Trotoir, Luers and Drummond under 35 U.S.C. § 102(b or e).
B.
The Examiner relies on each of Ferrigno, Salyer, Trotoir, Luers and
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Drummond in the same manner in the ground of rejection under § 103(a)
and further includes Geissler therewith to show different antioxidants which
have been used to increase the autoignition temperature of polymer
dispersion powders that have a tendency toward autoignition, contending
that it would have been obvious to one of ordinary skill in the art to use
Geissler’s antioxidants in the compositions of each of each of Ferrigno,
Salyer, Trotoir, Luers and Drummond. Ans. 4-57-8, 10-11. See Geissler
col. 1 ll.5-50, col. 3 ll.22-46. In view of our findings above, we agree with
Appellant that the Examiner erred in concluding that the combination of
each of Ferrigno, Salyer, Trotoir, Luers and Drummond with Geissler alone
would have led one of ordinary skill in the art to coated discrete inorganic
oxide particulates which necessarily inherently have an “auto-ignition
temperature” that is “at least 20ºC higher than the auto-ignition temperature”
of the coated particulates without an antioxidant or inhibitor as specified in
each of claims 1 and 13 without explaining why this is so with respect to the
particular inorganic oxide particulates disclosed in each of Ferrigno, Salyer,
Trotoir, Luers and Drummond. Br. 15-20; Ans. 6. See, e.g., Oelrich, 666
F.2d at 581 (“The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.”).
Accordingly, in the absence of a prima facie case of obviousness, we
reverse the rejections of claims 1, 2 and 4-19 under 35 U.S.C.
§ 103(a).
The Primary Examiner’s decision is reversed.
REVERSED