Ex Parte De Winter et alDownload PDFPatent Trial and Appeal BoardDec 29, 201613148755 (P.T.A.B. Dec. 29, 2016) Copy Citation 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. W9802-01 4599 EXAMINER BUTCHER, ROBERT T ART UNIT PAPER NUMBER 1768 MAIL DATE DELIVERY MODE 13/148,755 02/17/2012 30634 7590 12/29/2016 GRACE GMBH & CO. KG 7500 GRACE DRIVE COLUMBIA, MD 21044 Kris P. De Winter 12/29/2016 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 KRIS P. DE WINTER, NICOLAS H.M. LELIVELD, HORST HERRIG, and DANIEL RAY FRUGE Appeal 2015-007461 Application 13/148,755 Technology Center 1700 Before ROMULO H. DELMENDO, JULIA HEANEY, and MONTE T. SQUIRE, Administrative Patent Judges. SQUIRE, Administrative Patent Judge. DECISION ON APPEAL1 Appellants2 appeal the Examiner’s final rejection of claims 1—7, 21, 25, 26, and 28—34. 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 In this decision, we refer to the Final Office Action appealed from, mailed June 16, 2014 (“Final Act.”); the Appeal Brief dated March 10, 2015 (“App. Br.”); the Examiner’s Answer to the Appeal Brief dated June 10, 2015 (“Ans.”); and the Appellants’ Reply Brief dated August 7, 2015 (“Reply Br.”). 2 Appellants identify W.R. Grace & Co.-Conn, as the Real Party in Interest. App. Br. 3. Appeal 2015-007461 Application 13/148,755 The Claimed Invention Appellants’ disclosure relates to metal oxide dispersions, polymeric compositions including such metal oxide dispersions, and methods of making the metal oxide dispersions. Spec. 11. The compositions include metal oxide particles suspended in oil or other suited media, with or without stabilization. Id. at 13. Claims 1 and 25 are illustrative of the claims on appeal and are reproduced below from the Claims Appendix to the Appeal Brief (App. Br. 17, 18): 1. A metal oxide particulate dispersion comprising: a continuous liquid phase comprising oil; and particles dispersed within the oil, said particles consisting of surface-treated metal oxide particles having an average particle size of 35 microns or less, said surface-treated metal oxide particles having particle surfaces with increased hydrophobicity when compared to identical, untreated metal oxide particles; wherein the dispersion comprises from 0 to less than 10% by weight of any combination of water and a water miscible solvent, based on a total weight of the dispersion. 25. The metal oxide particulate dispersion according to claim 1, wherein the dispersion consists essentially of said oil, said surface-treated metal oxide particles, and from 0 to less than 10% by weight of any combination of said water and said water miscible solvent, based on a total weight of the dispersion. The Reference The Examiner relies on the following prior art reference as evidence in rejecting the claims on appeal: Baran, Jr. et al., US 2004/0242729 A1 Dec. 2, 2004 (hereinafter “Baran”) 2 Appeal 2015-007461 Application 13/148,755 The Rejection On appeal, the Examiner maintains the following rejection: Claims 1— 7, 21, 25, 26, and 28—34 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Baran. Ans. 2; Final Act. 3. OPINION Having considered the respective positions advanced by the Examiner and Appellants in light of this appeal record, we affirm the Examiner’s rejections for the reasons set forth in the Answer to the Appeal Brief and Final Office Action appealed from, which we adopt as our own. We highlight and address specific findings and arguments for emphasis as follows. Claims 1—7, 21, 26, and 29—34 Appellants argue claims 1—7, 21, 26, and 29-34 as a group. We select claim 1 as representative and the remaining claims stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). The Examiner finds that Baran suggests a particulate dispersion satisfying all of the limitations of claim 1 and concludes that the reference would have rendered claim 1 obvious. Ans. 2, 3 (citing Baran, Abstract, || 16, 23, 27, 40). In particular, the Examiner finds that Baran discloses: (1) a metal oxide particulate dispersion comprising water and oil; (2) a continuous liquid phase; (3) that the continuous liquid phase may comprise from 0— 100% organic liquid and 0-100% water; and (4) that the organic liquid may be oil, as claimed. Id. at 2 (citing Baran, Abstract, 140). Appellants argue that the Examiner’s rejection of claim 1 should be reversed for a number of reasons. App. Br. 8—13. In particular, Appellants 3 Appeal 2015-007461 Application 13/148,755 argue that: (1) “Baran fails to teach or suggest Appellants’ claimed dispersion” (App. Br. 8); (2) “Baran teaches away from Appellants’ claimed dispersion” (id. at 8); (3) “Baran suggests a continuous liquid phase in the form of 100 wt% organic liquid” (id. at 9); (4) “Baran fails to suggest, in any way, a ‘dispersion’ comprising a continuous liquid phase in the form of a water immiscible (e.g., oil) component with an insoluble or immiscible liquid component dispersed therein” (id. at 9); (5) “Baran guides one skilled in the art to utilize various liquids to form the continuous liquid phase (e.g., water, organic liquids, oils, fluorinated compounds, polymers, and combinations thereof)” (id. at 10); (6) “Baran does not suggest to one skilled in the art, or guide one skilled in the art, to utilize a combination of oil and water to form a given ‘continuous liquid phase’” (id. at 11); (7) “Appellants’ claimed metal oxide particulate dispersions specifically exclude any particles other than those specifically recited” in the claim (id. at 11); and (8) the Examiner’s proposed modification “would change the principle of operation of the teaching of Baran” (id. at 13). We are not persuaded by any of these arguments. On the record before us, we find that the Examiner’s conclusion, based on underlying findings, that Baran suggests a particulate dispersion satisfying all of the limitations of claim 1 are supported by a preponderance of the evidence and based on sound technical reasoning. Baran, Abstract, || 16, 23, 27, 39, 40. As the Examiner finds (Ans. 7, 8) and contrary to what Appellants argue, Baran does suggest the claimed dispersion including a continuous liquid phase comprising both oil and water. Baran, Abstract, || 16, 40-42. Appellants’ arguments regarding the continuous liquid phase and particularly, that Baran suggests a continuous liquid phase comprising only 4 Appeal 2015-007461 Application 13/148,755 “100 wt% organic liquid” (App. Br. 9) are unpersuasive because Baran’s disclosure is not limited to the specific embodiment of 0 wt% water. In re Mills, 470 F.2d 649, 651 (CCPA 1972) (“[A] reference is not limited to the disclosure of specific working examples.”). Rather, as the Examiner correctly points out (Ans. 7), the claims encompass dispersions comprising “0 to less than 10” wt% water or water miscible solvent and Baran discloses embodiments that include both oil and water, which read squarely on the claimed range. Baran, 140 (disclosing that in some embodiments, the dispersions “may be any range between 100 and 0 weight percent water” and “may be any range between 100 and 0 weight percent organic”). Moreover, we concur with the Examiner’s analysis and finding (Ans. 8—11) that Baran’s teachings suggest and provide ample guidance to one of ordinary skill in the art to have selected a metal oxide particulate dispersion comprising a combination of oil and water. Baran, Abstract, || 16, 23, 27, 39, 40-42. Contrary to what Appellants’ argument suggests, the fact that Baran discloses “various liquids to form the continuous liquid phase” does not render any particular liquid or liquid combination less obvious. Merck & Co., Inc. v. Biocraft Labs, Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). We do not find Appellants’ teaching away arguments (App. Br. 8, 15) persuasive because Appellants do not identify sufficient evidence to support them, and we will not read into the reference a teaching away where no such language exists. Cf. DyStar Textilfarben GmbHv. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006). In particular, Appellants’ contention that “Baran teaches away from [the] claimed dispersion” (App. Br. 8) is conclusory and, without more, insufficient to establish that the reference teaches away from the claimed invention or adequately rebut the Examiner’s 5 Appeal 2015-007461 Application 13/148,755 analysis and findings in this regard. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Appellants also do not identify any teaching in Baran which discourages one of ordinary skill in the art from a metal oxide particulate dispersion comprising a continuous liquid phase and particles dispersed therein, as claimed. In re Fulton, 391 F.3d 1195, 1201 (finding that there is no teaching away where the prior art’s disclosure “does not criticize, discredit, or otherwise discourage the solution claimed”). Appellants’ argument that the Examiner’s proposed modification “would change the principle of operation of the teaching of Baran” (App. 13) is equally unpersuasive because it is conclusory and Appellants do not provide an adequate technical explanation to support it. De Blauwe, 736 F.2d at 705. We do not find Appellants’ argument that the “claimed metal oxide particulate dispersions specifically exclude any particles other than those specifically recited” (App. Br. 11) persuasive for the well-stated reasons provided by the Examiner at pages 6 and 7 of the Answer. As the Examiner explains (Ans. 6), the preamble of claim 1 recites “comprising” transitional language and thus, does not exclude additional components as Appellants argue. Indeed, as the Examiner finds {id.), Baran’s dispersions comprising both insoluble inorganic nanoparticles and surface modified nanoparticles (Baran, | 8) and including additional metal oxide particles in the dispersion are not excluded by claim 1 as drafted. Claim 25 Appellants argue that the Examiner’s rejection of claim 25 should be reversed for reasons similar to those previously discussed above regarding claim 1. App. Br. 13. In particular, Appellants argue that “the claim 6 Appeal 2015-007461 Application 13/148,755 language of dependent claim 25 excludes any additional components from Appellants’ claimed dispersion other than those specifically recited if the additional components ‘materially affect the basic and novel characteristics’ Appellants’ claimed dispersion.” Id. at 13, 14. Appellants contend that: additional particles, such as carbon black, aluminum oxide, cerium oxide, etc. listed in paragraph [0042] of Baran, and (2) additional liquids other than (i) oil, (ii) water, and (iii) a water miscible solvent are specifically excluded from Appellants’ claimed dispersion of dependent claim 25. Id. at 14. We do not find Appellants’ argument persuasive for largely the same reasons discussed above in affirming the Examiner’s rejection of claim 1. In particular, because claim 25’s “consisting essentially of’ transitional language includes not only what is specifically recited in the claim, but also any other materials which “do not materially affect the basic and novel characteristic(s)” of the claimed dispersion, claim 25 does not necessarily exclude the components identified by Appellants. In re Herz, 537 F.2d 549, 551-52 (CCPA 1976) (quoting In re Janakirama-Rao, 317 F.2d 951 (CCPA 1963)). Rather, Appellants have the burden of showing that the additional ingredients taught by Baran materially affect the basic and novel characteristics of the claimed invention. See In re De Lajarte, 337 F.2d 870, 873-74 (CCPA 1964). On this record, however, Appellants have not met their burden. Appellants do not identity or direct us to sufficient evidence in the record that any of the additional components Baran discloses would materially affect the basic and novel characteristics of the claimed dispersion. Appellants’ argument that “claim 25 excludes any additional components” 7 Appeal 2015-007461 Application 13/148,755 (App. Br. 13) is conclusory and, without more, insufficient to satisfy Appellants’ evidentiary burden in this regard. De Blauwe, 736 F.2d at 705. Claim 28 Claim 28 is similar to claim 1 and recites: A metal oxide particulate dispersion comprising: a continuous liquid phase comprising oil; a water miscible liquid phase comprising from greater than 0 to less than 10% by weight of any combination of water and a water miscible solvent, based on a total weight of the dispersion; and metal oxide particles having an average particle size of 35 microns or less dispersed within the oil. App. Br. 19 (Claim’s App’x). Appellants argue that the Examiner’s rejection of claim 28 should be reversed “for some of the reasons” previously presented above regarding claim 1. App. Br. 15. In particular, Appellants argue that “Baran fails to disclose, teach or suggest [the claimed] dispersion” and that “Baran specifically teaches away from such a ‘dispersion.’” Id. at 15. Appellants further argue that There simply is no suggestion in the teaching of Baran that would have lead one skilled in the alt to form a dispersion by adding, as a dispersed phase within a continuous oil phase, a dispersed water or water miscible liquid phase in addition to the dispersed solid insoluble particle phase. Id. at 15. We remain unpersuaded by these arguments for essentially the same reasons previously discussed above in affirming the Examiner’s rejection of claim 1 and because Appellants’ naked assertion that the prior art fails to teach or suggest a claim’s limitation is not an argument in support of 8 Appeal 2015-007461 Application 13/148,755 separate patentability sufficient to weigh in favor of non-obviousness. Cf. In reLovin, 652 F.3d 1349, 1356-57 (Fed. Cir. 2011); see also 37 C.F.R. § 41.37(c)(l)(iv). Accordingly, we affirm the Examiner’s rejection of claims 1—7, 21, 25, 26, and 28—34 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Baran. DECISION/ORDER The Examiner’s rejection of claims 1—7, 21, 25, 26, and 28—34 is affirmed. It is ordered that the Examiner’s decision is 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 9 Copy with citationCopy as parenthetical citation