Ex Parte Bello et al

Patent Trial and Appeal Board

Jan 19, 2018

13306570 (P.T.A.B. Jan. 19, 2018)

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.
13/306,570 11/29/2011 Nolan Bello 128404.14US1 8025
34018 7590
Greenberg Traurig, LLP
77 W. Wacker Drive
Suite 3100
CHICAGO, IL 60601-1732
EXAMINER
LIANG, ANTHONY M
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
01/23/2018 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):
chiipmail @ gtlaw .com
escobedot@gtlaw.com
j arosikg @ gtlaw .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NOLAN BELLO and SUSHIL N. KESWANI1
Appeal 2017-003084
Application 13/306,5702
Technology Center 1700
Before JEFFREY T. SMITH, JEFFREY R. SNAY, and
MERRELL C. CASHION JRAdministrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Final Rejection
of pending claims 1—3, 9, and 10, which constitute all the claims pending in
this application.3 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 These are the named inventors of the present application.
2 According to Appellant, the real party in interest is Ideal Industries, Inc.
See App. Br. 2.
3 The Examiner entered the amendment filed January 26, 2016, withdrawing
claims 11—24 from consideration and canceling claims 4—8 and 25—31.
(Advisory Action, mailed February 18, 2016).
Appeal 2017-003084
Application 13/306,570
Appellants’ appealed invention is directed to a method of forming an
antioxidant material for use between two electrical connectors.
Representative claim 1 is reproduced below:
1. A method of forming an antioxidant material for use
between two electrical connectors comprising:
melting a wax base, wherein the wax base has a melting
temperature of at least about 73.0° C, a kinematic viscosity of
between about 13.0 cSt and 17.0 cSt at 100° C, an oil content of
less than about 2.5% by weight, and a needle penetration depth
of the wax base is about 20 dmm to 30 dmm at 25° C;
adding metal particles to the melted wax to form a suspension,
wherein the metal particles are zinc and the suspension includes
about 10% to 95% by weight of the metal particles;
cooling the suspension to form a malleable solid; and
forming the malleable solid into a shape suitable for placement
between the two electrical connectors.
Claims Appendix to App. Br.
Appellants (see generally App. Br.) request review of the following
rejections:
I. Claims 1—3 and 10 rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Bradley et al. (U.S.
4,578,215), Pillon (Pillon, Lilianna Z. “Conventional Refining.”
Interfacial Properties of Petroleum Products. Boca Raton:
Taylor & Francis, 2008. 68.), and Van Eck (US 5,744,197), as
evidenced by Braunovic et al. (Braunovic, Milenko, V. V.
Konchits, and Nikolai Konstantinovich. Myshkin. “Introduction
to Electrical Contacts.” Introduction. Electrical Contacts:
Fundamentals, Applications and Technology. Boca Raton:
CRC, 2007. 3-6.), Sequeira (Sequeira, Avilino. “Crude Oils,
Base Oils, and Petroleum Wax.” Lubricant Base Oil and Wax
Processing. New York: M. Dekker, 1994. 39.), NIIR Board of
Consultants & Engineers (NIIR Board of Consultants &
Engineers. “Microcrystalline Waxes.” The Complete
2
Appeal 2017-003084
Application 13/306,570
Technology Book on Wax and Polishes. Delhi, India: Asia
Pacific Business, 2007. 563-64.), Termeer (Termeer, Chris.
“Finished Products & Standards. ” Fundamentals of Investing in
Oil and Gas. Chris Termeer Publishing, 2013.), and Slade
(Slade, Paul G. “Aluminum and Its Alloys.” Electrical
Contacts: Principles and Applications. 2nd ed. Boca Raton:
CRC Press, 2013. 243.). (Final Act. 3-9).
II. Claim 9 rejected under 35 U.S.C. § 103(a) as unpatentable over
Bradley et al. in view of Van Eck and Pillon, as applied to
claim 1 above, and further in view of Ohring (Ohring, Milton.
“Polymer Processing.” Engineering Materials Science. San
Diego: Academic, 1995. 408.). (Final Act. 9).
OPINION4
After consideration of the evidence in this appeal record in light of the
respective positions advanced by the Examiner and Appellants, we
determine the Examiner erred in the determination that the combination of
Bradley, Pillon, Van Eck, Braunovic, Sequeira, NIIR Board of Consultants
& Engineers, Termer and Slade would have suggested a method of making a
conductive material (wax) that would have (i) met the requirements of
Bradley wherein the conductive material must flow to permit proper
distribution of the conductive medium between the connecting surfaces and
must not form a film which resists penetration by points of the conductive
medium particles and on the surfaces of the electrical connection (Bradley
paragraph bridging columns 8 and 9) and (ii) met the requirements of the
claimed invention wherein the claimed wax base (carrier) has a melting
temperature of at least about 73.0° C, a kinematic viscosity of between about
13.0 cSt and 17.0 cSt at 100° C, an oil content of less than about 2.5% by
3
Appeal 2017-003084
Application 13/306,570
weight, and a needle penetration depth of the wax base is about 20 dmm to
30 dmm at 25° C as required by independent claim l.5
The Examiner found that the combination of Bradley, Pillon, Van
Eck, Braunovic, Sequeira, NIIR Board of Consultants & Engineers, Termer
and Slade would have suggested a method of making forming an antioxidant
material comprising a conductive material (wax) that is suitable for use
between 2 electrical contacts. See generally Final Act. 4—8.
Appellants argue the appealed rejection and the Examiner’s responses
in the Answer fail in meeting the burden associated with presenting a prima
facie case of obviousness under 35 U.S.C. § 103. (See generally App. Br.
and Reply Br.). Appellants contend that the Examiner has not provided any
evidence to support the conclusion that one or ordinary skill in the art would
have modified Bradley in the manner asserted to arrive at the claimed
invention. (Appeal Br. 5; Reply Br. 4). Appellants argue the Examiner has
not established that a carrier base (wax) spread over the surface of the
substrate by utilizing brushes, cotton swabs or the like, as required by
Bradley, meets the wax base requirement of the claimed invention that the
wax be a malleable solid (i.e., the wax does not flow under normal operating
conditions). (App. Br. 5, citing Bradley paragraph bridging columns 8 and
9; Spec. 120; Reply Br. 3). That is, Appellants argue Bradley requires the
carrier base to flow to permit distribution of the conductive media between
5 The complete statement of the rejections on appeal appears in the Final
Office Action. (Final Act. 3—9).
4
Appeal 2017-003084
Application 13/306,570
the connecting surfaces while there is no similar requirement for the claimed
wax base carrier. (App. Br. 4—5).
We agree with Appellants that the Examiner’s rejection of
independent claims 1 is not well-founded. The Examiner’s rejection is
premised on the identification of numerous references which describe
varying properties associated with petroleum wax. The Examiner has not
directed us to adequate evidence to establish that the petroleum based carrier
wax required for Bradley would necessarily have the properties of a melting
temperature of at least about 73.0° C, a kinematic viscosity of between about
13.0 cSt and 17.0 cSt at 100° C, an oil content of less than about 2.5% by
weight, and a needle penetration depth of the wax base is about 20 dmm to
30 dmm at 25° C as required by independent claim 1. We recognize the
evidence cited by the Examiner describes the various possibilities of
properties associated with petroleum waxes. However, the Examiner has not
adequately explained how these references would have led a person of
ordinary skill in the art to the selection of the carrier base that would meet
both the requirements of Bradley and the claimed invention. Accordingly,
we reverse Rejections I—II.6
Accordingly, we reverse the Examiner’s decision to reject claims 1—3,
9 and 10 for the reasons presented by Appellants and given above.
DECISION
The obviousness rejections of claims 1—3, 9 and 10 are reversed.
REVERSED
6 The additional reference relied upon by the Examiner in the obviousness
Rejection II was cited to address limitations of the dependent claims that are
not related to our discussion of the independent claims.
5