Ex Parte Brown et al

Patent Trial and Appeal Board

Mar 1, 2018

13635538 (P.T.A.B. Mar. 1, 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.
13/635,538 11/16/2012 Daniel James Brown BBL-100US 7901
23122 7590 03/05/2018
RATNFRPRFSTTA EXAMINER
2200 Renaissance Blvd TRAN, LIEN THUY
Suite 350
King of Prussia, PA 19406 ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
03/05/2018 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):
PCorrespondence @ ratnerprestia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL JAMES BROWN and DIANA JORDAN
Appeal 2017-005003
Application 13/635,5381
Technology Center 1700
Before JEFFREY T. SMITH, WESLEY B. DERRICK, and
MICHAEL G. McMANUS, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
maintained rejection under 35 U.S.C. § 103(a) of claims 22-24, 26-28,
44—47, and 52 over GB 'Oil2 in view of Perlman.3 We have jurisdiction
under 35 U.S.C. § 6.
We REVERSE.
1 Appellants identify KUDOS BLENDS LTD. as the real party in interest.
Appeal Br. 2.
2 GB 987,011, published March 24, 1965.
3 Perlman, US 2009/0092727 Al, published April 9, 2009.
Appeal 2017-005003
Application 13/635,538
THE INVENTION
The subject matter of the claims on appeal relates to potassium
bicarbonate coated with an anionic or amphoteric surfactant to inhibit caking
on storage and premature loss of carbon dioxide when mixed with an
acidulant. Specification filed September 17, 2012 (“Spec.”), Abstract. The
stabilized potassium bicarbonate composition of the invention is identified
as “for use in baking.” Spec. 1,11. 14-15.
Independent claim 22 is representative.
22. Potassium bicarbonate comprising potassium bicarbonate
particles, wherein substantially all of said potassium
bicarbonate particles have a particle size less than 500 p, and
said potassium bicarbonate particles are coated with a layer of a
substantially dry anionic surfactant selected from the group
consisting of soaps and alkyl benzene sulphonates, said layer
having a contact angle of at least 90°.
Appeal Brief filed September 26, 2016 (“Appeal Br.”), 14.
The recited limitation of “having a contact angle of at least 90°” is a
measurement indicating an initially hydrophobic coating. Spec. 12,11. 11-
12, 23,11. 20-21,24,11. 2^1.
DISCUSSION4
We are persuaded that the Examiner has failed to meet the Office’s
burden of establishing the unpatentability of the claims. For any ground of
rejection, “the [Ejxaminer bears the initial burden ... of presenting a prima
4 In our discussion, we refer to the Specification, the Final Office Action
issued March 18, 2016 (“Final Act.”), the Appeal Brief, the Examiner’s
Answer issued November 29, 2016 (“Ans.”), and the Reply Brief filed
January 30, 2017 (“Reply Br.”).
2
Appeal 2017-005003
Application 13/635,538
facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992). We add the following.
Claim 22 requires, inter alia, that the “potassium bicarbonate particles
are coated with a layer of a substantially dry anionic surfactant. . . having a
contact angle of at least 90°.”
GB 'Oil relates to a process for manufacturing dry fire-extinguishing
powder based on potassium bicarbonate. The Examiner relies on GB 'Oil
for its disclosure of a mixture comprising potassium bicarbonate and a
hydrophobic agent that is ground into a powder, which is then treated with
carbon dioxide. Final Act. 2; Ans. 3. GB 'Oil teaches that contaminating
“potassium carbonate, for example of 2K2CO3.3FEO” results in powders
that are not sufficiently free-flowing for optimal use as dry fire­
extinguishing powder. GB 'Oil, 1,11. 10-24. The hydrophobic agent
included in the powder is characterized as facilitating the removal of water
formed upon treatment with carbon dioxide to convert contaminating
potassium carbonate into potassium bicarbonate. GB 'Oil, 1,11. 38^44.
Perlman relates to a dry-milled composition including phytosterol-
surfactant conglomerates that is water dispersible. Perlman, Abstract. The
Examiner relies on Perlman as “teaching] to mill the phytosterol particles
with the surfactant particles under high shear conditions to produce
conglomerate particles in which the phytosterol particles are intimately
associated with the surfactant particles” and that “the high shear conditions
are such that significant size reduction is obtained.” Final Act. 2-3; Ans. 3.
The Examiner finds Perlman discloses that “[t]he size of the particles may
be of any of a range of sizes in the range of 1-100 micron for the phytosterol
particles and 10-250 microns for the surfactant.” Final Act. 4; Ans. 3.
3
Appeal 2017-005003
Application 13/635,538
The Examiner concludes that “[i]t would have been obvious to one
skilled in the art at the time of the invention to use the high shearing method
taught in Perlman to ensure that the fine particle sizes [of Perlman] are
obtained” and that “the high shear milling also provides the benefit of. . .
providing adhesion between the particles and the surfactant.” Final Act. 3;
Ans. 4.
The Examiner finds “[t]he contact angle is disclosed to be present by
milling the potassium [carbonate] particles with a hydrophobic agent under
high shearing.” Final Act. 3; Ans. 4. The Examiner maintains both that
(1) “[t]he contact angle is an inherent result of the processing step and
recognition of an inherent result is not a basis for patentability” and that
(2) “the contact angle is not an actual component that is present on the
product. . . [and thus] closely parallel[s]... an intended use which does not
determine the patentability of the product.” Final Act. 4; Ans. 4-5.
On this record, the Examiner has failed to meet the requisite burden to
establish a prima facie case. As to GB 'Oil, the Examiner makes no factual
finding as to how, or if, the potassium bicarbonate and hydrophobic agent in
the mixture are associated together in the same particles either before or
after it is ground into a powder. See generally Final Act. and Ans. Further,
the Examiner fails to set forth a reasonable basis for concluding that
potassium bicarbonate and surfactants would adhere in a similar manner as
the phytosterols and surfactants in Perlman despite the manifest differences
in the properties of potassium bicarbonate and phytosterols. See generally
Final Act. and Ans.
Even assuming arguendo that one of ordinary skill in the art at the
time of the invention would have looked to Perlman for a method of
4
Appeal 2017-005003
Application 13/635,538
grinding to obtain fine particle sizes as contended by the Examiner, the
Examiner has failed to establish that Perlman’s “high shear” grinding or
milling are such that the recited contact angle is an inherent result of the
processing step.
Appellants contend that grinding or milling conditions sufficient to
obtain the requisite fine particles do not necessarily provide the required
contact angle and the Examiner thus errs in finding it inherent. Appeal Br.
3-12. Appellants rely on evidentiary support in the declaration of Daniel
James Brown dated June 19, 2015 (“Decl.”) as establishing that “[o]nly after
prolonged or intense shearing ... a coating with an obtuse contact angle
could be obtained” (Decl. ^ 9) and that preparation of particles meeting the
size limitation of the claims by micronisation, which can be accomplished
with or without high sheer conditions, only exhibit an obtuse contact angle
when prepared under high shear conditions (id. at ^ 11).
As highlighted by Appellants (Appeal Br. 7-8), Perlman teaches that
“[i]n the context of milling the present materials [phytosterols and
surfactants], the term ‘high shear conditions’ . . . indicates that the milling
conditions are such that significant size reduction of 250 micron . . . dry
surfactant (e.g., binary surfactant) particles” will occur (Perlman 49).
Appellants argue, in effect, that Perlman’s “high shear milling” is not
necessarily high shear milling sufficient to, in fact, provide particles
according to the claims with an obtuse contact angle.
The Examiner responds that Appellants have “not submitted any
factual evidence to show that the high shearing milling in Perlman is in fact
not high shear milling.” Ans. 6. The Examiner further maintains that “the
declaration states the blends are micronized” and that because “[mjicronize
5
Appeal 2017-005003
Application 13/635,538
means breaking a substance into very fine particles . . . there is no difference
between the high shear stated in the declaration and the high shear disclosed
in Perlman.” Ans. 7.
The Examiner’s response to Appellants’ argument is not well-founded
because what Perlman defines to be a “high shear condition” is only that
which is required to break the substance into very fine particles (Perlman
^ 49) and the declaration establishes this can be accomplished using both
low and high shear conditions (see Decl. ^ 11). Further, as to the
Examiner’s reasoning that there is no difference in the high shear conditions
of the declaration and Perlman because both micronize the material, by this
same reasoning, there would also be no difference with the low shear
conditions of the declaration because they also micronize the material.
As to the Examiner’s further reliance on Perlman’s disclosure of
hammer milling, including comparison of disclosed rotor speeds to those of
an air classifier mill in the Specification (Ans. 7-8 (citing Perlman ^ 92, 94;
Spec. 17,1. 20-18,1. 7 (Example IV))), there is no sufficient explanation
how the different machines, and their disclosed operating conditions, relate
to one another to establish that Perlman’s hammer mills are necessarily high
shear mills like those used in the practice of the invention. Further,
assuming arguendo that the disclosed mills were capable of operating at
high shear conditions, Perlman’s required level of sheer—the level required
to obtain the requisite fine particles—is not necessarily the high sheer
condition required to obtain particles with the recited obtuse contact angle.
On this record, accordingly, the Examiner has failed to establish that
the milling process used in Perlman is substantially identical to that which
the evidence of record establishes is required to obtain particles having the
6
Appeal 2017-005003
Application 13/635,538
purported inherent property of “having a contact angle of at least 90°.” It
cannot be said, therefore, that the result is inherent to the prior art process.
In re Montgomery, 677 F.3d 1375, 1379-80 (Fed. Cir. 2012) (“The inherent
result must inevitably result from the disclosed steps; ‘[ijnherency . . . may
not be established by probabilities or possibilities.’”) (citations omitted).
Accordingly, the Examiner erred reversibly in rejecting the claims on the
basis that the contact angle is an inherent result of the processing step.
The Examiner’s further reasoning that “the contact angle is not an
actual component that is present on the product. . . [and thus] closely
parallels] ... an intended use which does not determine the patentability of
the product” (Final Act. 4; Ans. 4-5) is also reversible error. The reasoning
wholly ignores a claim limitation, the recited contact angle. While the
contact angle is the measure of a property or characteristic of the product
when contacting a water droplet, it is manifestly the measure of that
product’s property.
On this record, for the reasons above, the Examiner’s articulated
reasoning falls short of that necessary for a prima facie case. See In re
Warner, 379 F.2d 1011,1017 (CCPA 1967) (“The Patent Office has the
initial duty of supplying the factual basis for its rejection. It may not. . .
resort to speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies in its factual basis.”); In re Sporck, 301 F.2d 686, 690
(CCPA 1962); see also Oetiker, 977 F.2d at 1445.
We decline to scour the record in the first instance for facts that might
support a prior art rejection of the claim on appeal, as our primary role is
review, not examination de novo.
7
Appeal 2017-005003
Application 13/635,538
DECISION
The Examiner’s decision rejecting claims 22-24, 26-28, 44^17, and
52 is reversed.
REVERSED
8