Ex Parte Kinnen et al

Board of Patent Appeals and Interferences

Feb 20, 2009

10123425 (B.P.A.I. Feb. 20, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ANDREAS KINNEN, HELMUT DILLENBURG, KURT
SCHINNINGER and CHRISTOPH NOVER
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Appeal 2008-6221
Application 10/123,425
Technology Center 1700
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Decided:1 February 24, 2009
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Before TERRY J. OWENS, PETER F. KRATZ, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 5-8. We have jurisdiction pursuant to
35 U.S.C. § 6.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-6221
Application 10/123,425
Appellants assert invention in a method directed to preparing
precipitated calcium carbonate of an average particle size of less than 70
nanometers (nm) employing milk of lime (calcium hydroxide) as a source
material. Also, Appellants claim invention in a method of controlling the
flow limit of a composition that includes steps directed to preparing
precipitated calcium carbonate from milk of lime and a step of adding the so
prepared calcium carbonate to a polymer, plastic, a coating compound, a
sealing compound, paper, or paint. Claims 5 and 8 are illustrative and
reproduced below:
5. A method of controlling a flow limit of a composition, comprising:
grinding milk of lime to obtain ground milk of lime;
continuously measuring the viscosity of the milk of lime during the
grinding;
controlling the grinding in response to the measured viscosity;
thereafter introducing CO2 into the ground milk of lime to precipitate
calcium carbonate having an average particle size of less than or equal to
about 70 nm; and
adding the calcium carbonate as a rheological additive to the
composition selected from the group consisting of a polymer, a plastic, a
coating compound, a sealing compound, paper, and paint, thereby adjusting
the flow limit of the composition.

8. A method of preparing a rheological additive, comprising;
grinding milk of lime to obtain ground milk of lime;
continuously measuring the viscosity of the milk of lime during the
grinding;
controlling the grinding in response to the measured viscosity;
adjusting the viscosity of the milk of lime based upon a predetermined
flow limit for a composition; and
introducing CO2 into the ground milk of lime to precipitate calcium
carbonate having an average particle size of less than or equal to about 70nm
as a rheological additive for the composition.

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Appeal 2008-6221
Application 10/123,425
The Examiner relies on the following prior art reference as evidence
in rejecting the appealed claims:
Bleakley 5,342,600 Aug. 30, 1994
Bleakley 5,833,747 Nov. 10, 1998
Rayfield 4,898,620 Feb. 6, 1990

Claims 5 and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bleakley ‘600 in view of Bleakley ‘747. Claims 6 and 7
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bleakley
‘600 in view of Bleakley ‘747, and Rayfield.

ISSUE
Have Appellants identified reversible error in the Examiner’s
obviousness rejections by showing that the Examiner has not established that
the applied prior art, in combination, discloses or suggests a method of
forming a precipitated calcium carbonate having an average particle size less
than or equal to about 70nm, as required by the appealed claims?

SUMMARY DECISION
We answer this question in the affirmative and we reverse the
Examiner’s obviousness rejections as to all of the appealed claims for
reasons set forth in Appellants’ Brief and the Reply Brief discussed below.

PRINCIPLES OF LAW
The Examiner bears the initial burden, on review of prior art or on any
other ground of rejection, of presenting a prima facie case of non-
patentability. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
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Appeal 2008-6221
Application 10/123,425
In undertaking this burden with respect to the obviousness rejections
before us, the Examiner should have identified a rationale that would have
led an ordinarily skilled artisan to a method corresponding to the claimed
method, including products corresponding to any products called for as part
of the claimed method, based on the proffered teachings of the applied prior
art and/or inferences that could be drawn therefrom. See KSR Int’l Co. v.
Teleflex, Inc., 127 S. Ct. 1727, 1741 (2007). After all, rejections based on §
103(a) must rest on a factual basis with these facts being interpreted without
impermissible hindsight reconstruction of the claimed invention from the
prior art. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).

RELEVANT FACTUAL FINDINGS AND ANALYSIS
Obviousness Rejection of Claims 5 and 8
Bleakley ‘600 discloses and/or suggests a method of preparing
precipitated calcium carbonate for use as paper-making filler or as a pigment
for paper (col. 1, ll. 8-11; col. 2, ll. 29-32; and col. 3, ll. 10-37). Bleakley
discloses, inter alia, that calcium hydroxide suspended in water (milk of
lime) is subjected to agitation with grinding followed by treatment with
carbon dioxide to form the precipitate (col. 3, ll. 20-37 and 55-61).
The Examiner has found that “Bleakley ‘600 fails to disclose … a[n]
average particle size of about 70 nm or less” for particles of the precipitated
calcium carbonate (Ans. 4). The Examiner turns to Blakely ‘747 to
allegedly fill this gap (Ans. 4).
Bleakley ‘747 discloses or suggests that precipitated calcium
carbonate (PCC) can be comminuted to form a precipitate having preferred
particle sizes distributed as follows:
96-99 weight percent less than one micron;
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Appeal 2008-6221
Application 10/123,425
50-80 weight percent less than 0.5 micron; and
10-45 weight percent less than 0.25 micron (col. 4, ll. 25-45).
Bleakley ‘747 teaches that calcium carbonate precipitate having the
disclosed product particle distribution is useful as a paper coating additive in
producing product having desired optical properties (col. 1, ll. 4-26 and col.
3, ll. 56-64).
The Examiner interprets the precipitate particle size disclosure of
Bleakley ‘747 as suggesting three ranges of particle sizes, all of which
“disclosed ranges include Applicant’s claimed range and all suggest
optimally small sizes with the usage of ‘less than’” (Ans. 7). However, the
three particle size ranges disclosed by Bleakley ‘747 are all present in a
precipitate thereof at the same time in the weight percent amounts reported
for each range of particle sizes. Thus, the three particle size ranges of
Bleakley ‘747 taken together define the particle size distribution of the
precipitate of Bleakley ‘747. Consequently, Bleakley ‘747 describes a
particle size distribution that encompasses precipitate with a significant
amount of particles of a size much larger than Appellants’ claimed average
size for the precipitate particles of 70 nm (.07 microns) (Claims 5 and 8).
The Examiner has not reasonably explained why the average size of calcium
carbonate precipitate disclosed by Bleakley ‘747 is not significantly greater
than Appellants’ claimed average particle size, as argued by Appellants
(Ans. 4-6; App Br. 4-5).
Therefore, the Examiner has not fairly explained how Bleakley ‘747
together with Bleakley ‘600 teaches or suggests an average particle size for
the calcium carbonate precipitate corresponding to the average particle size
claimed for the reasons articulated by Appellants (App. Br. 4-5; Reply Br. 1-
2).
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Appeal 2008-6221
Application 10/123,425
It follows that, as argued by Appellants, the stated rejection is
deficient in presenting a prima facie case of obviousness at least by failing to
reasonably explain where the applied references, in combination, would
have reasonably taught or suggested a method involving the preparation of a
calcium carbonate precipitate having an average particle size, as required by
all of the rejected claims. See KSR, 127 S. Ct. at 1741.
Obviousness Rejection of Claims 6 and 7
Claims 6 and 7 depend from claim 5 and the Examiner relies on
Rayfield in addition to Bleakley ‘600 and Bleakley ‘747 to reject the claims.
However, the Examiner relies on Rayfield for an alleged disclosure of
plastisol, not for buttressing or curing the Examiner’s obviousness position
as to the average particle size required for the calcium carbonate precipitate
(Ans. 4, 5, and 7). As such, the Examiner’s obviousness rejection of
dependent claims 6 and 7 suffers from the same defect as noted above with
respect to the Examiner’s rejection of independent claim 5.

CONCLUSION
We agree with Appellants that the Examiner’s obviousness rejections
are premised on reversible error in that the Examiner did not establish that
the applied prior art discloses or suggests a method of forming a precipitated
calcium carbonate having an average particle size less than or equal to about
70nm, as called for as required by the appealed claims.

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Appeal 2008-6221
Application 10/123,425
ORDER
The Examiner’s decision to reject claims 5 and 8 under 35 U.S.C. §
103(a) as being unpatentable over Bleakley ‘600 in view of Bleakley ‘747;
and to reject claims 6 and 7 under 35 U.S.C. § 103(a) as being unpatentable
over Bleakley ‘600 in view of Bleakley ‘747, and Rayfield is reversed.

REVERSED

tc

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INTELLECTUAL PROPERTY GROUP
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