Ex Parte Chapman

Patent Trial and Appeal Board

Mar 22, 2016

11632610 (P.T.A.B. Mar. 22, 2016)

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.
11/632,610 01/16/2007 David Monroe Chapman W9628-01 7590
7590 03/23/2016
William D Bunch
W R Grace & Co Conn
Patent Department Legal Services Group
7500 Grace Drive
Columbia, MD 21044
EXAMINER
LI, JUN
ART UNIT PAPER NUMBER
1732
MAIL DATE DELIVERY MODE
03/23/2016 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 DAVID M. CHAPMAN
____________

Appeal 2014-006421
Application 11/632,610
Technology Center 1700
____________

Before KAREN M. HASTINGS, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1–11, 32, and 33 under 35 U.S.C. § 103(a).2
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 The Real Party in Interest is stated to be as W.R. Grace & Co.-Conn.
(App. Br. 3).
2 In the Appeal Brief, Appellant requested the opportunity to appear before
the Board to argue the issues (App. Br. 1). However, no separate paper
captioned REQUEST FOR ORAL HEARING or fee was timely filed, as
required by 37 C.F.R. § 41.47(b). Accordingly, we decide this appeal
without an oral hearing. 37 C.F.R. § 41.47(c).
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Application 11/632,610

2
Claim 1 is illustrative of the appealed subject matter (emphasis
added):
1. An alkaline dispersion of porous surface modified anionic
silica particles comprising:
(a) fluid, and
(b) the surface modified anionic silica particles with a
maximum fractional occupied volume (Φmax) of said particles in
said fluid of at least about 0.55, as determined from the
relationship.[3]
η /η0 = [1 – (Φ/ Φmax)]–[b]Φmax
wherein Φ is the fractional occupied volume of the solids in
the fluid, Φmax is the asymptotic limit of fractional occupied
volume as the viscosity approaches infinity, b is the intrinsic
viscosity, η0 is the viscosity of the fluid and η is the viscosity of
the dispersion.
(App. Br. 18, Claims App.)
The Examiner maintains, and Appellant appeals, the following
rejections under 35 U.S.C. § 103(a):
(a) Claims 1–2, 4–8, and 10 as being unpatentable over either Bomal
et al. (U.S. 2003/0066459 A1, published Apr. 10, 2003) (hereinafter
“Bomal”) or Bomal in view of Crawford et al. (U.S. Patent No. 5,030,286,
issued Jul. 9, 1991) (hereinafter “Crawford”), and further in view of Fukuda
et al. (JP 2003-268354 A, published Sep. 25, 2003; as translated)
(hereinafter “Fukuda”);

3 If prosecution is continued, amendment to claim 1 should be considered to
remove the period following the recitation of the claim term “the
relationship”.
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(b) Claims 3, 32, and 334 are rejected as being unpatentable over
Bomal in view of Crawford, and further in view of Fukuda;
(c) Claim 9 is rejected as being unpatentable over either Bomal or
Bomal in view of Crawford, and further in view of Fukuda, as evidenced by
Arita et al. (U.S. 2004/0179066 A1, published Sep. 16, 2004) (hereinafter
“Arita”); and
(d) Claim 11 is rejected as being unpatentable over either Bomal or
Bomal in view of Crawford, in view of Fukuda, and further in view of Pryor
et al. (U.S. Patent No. 6,380,265 B1, issued Apr. 30, 2002) (hereinafter
“Pryor”).
Appellant’s arguments urging reversal of the rejections of claims 1, 2,
and 4–11 focus mainly on limitations common to independent claim 1 (App.
Br. 6–16, Reply Br. 2–7). In the absence of arguments specific to their
patentability, dependent claims 2 and 4–11 stand or fall with claim 1. 37
C.F.R. § 41.37(c)(iv). Appellant separately argues the remaining dependent
claims 3, 32, and 33 (App. Br. 12–13).
ANALYSIS
Upon consideration of the evidence on this record and each of
Appellant’s contentions, we find that the preponderance of evidence on this
record supports the Examiner’s conclusion that independent claim 1 and all
of its dependent claims are unpatentable over the applied prior art.
Appellant has failed to show that the Examiner erred reversibly. We sustain

4 Although the Examiner rejected claims 3, 31, and 32 (Final Act. 3), claim
31 is a method claim previously withdrawn from consideration.
Accordingly, we decide this appeal on the assumption that the Examiner
intended to reject pending composition claims 3, 32, and 33.
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the Examiner’s § 103 rejections, as listed in (a) through (d) above, of all the
appealed claims for essentially the reasons set out by the Examiner in the
Final Office Action and the Answer.
We add the following primarily for emphasis.
Rejections (a), (c), and (d) under 35 U.S.C. § 103(a) (obviousness)
The Examiner finds that Bomal’s disclosure of forming a silica
dispersion in water (Ans. 6) discloses all the limitations of claim 1 except
that “Bomal does not expressly disclose such silica slurry having the claimed
maximal fractional occupied volume, intrinsic viscosity; and the dispersion
is an alkaline dispersion” (Final Act. 2). The Examiner finds, however, that
Bomal discloses a similar method for making a silica slurry as the
Specification (id.). According to the Examiner, therefore, Bomal’s disclosed
dispersion “is associated with a similar maximal f[r]actional occupied
volume, intrinsic viscosity as claimed absent evidence to the contrary” (id.
(citing Spec. ¶¶ 42–69)).
In the alternative to relying on Bomal alone, the Examiner relies upon
Crawford to exemplify the selection of silica formats as either powder or
aqueous slurry based on the user’s intended application (Ans. 6 (citing
Crawford, 1:1–37)). The Examiner finds Crawford teaches, inter alia, that
using silica in aqueous slurry format, instead of powder, avoids an increase
in coating paper viscosity (Final Act. 3 (citing Crawford 1:14–36; 6:26;
6:31–36); see also Ans. 6).
According to the Examiner, it would have been obvious for one of
ordinary skill in the art to take advantage of silica in a slurry format, as
taught by Crawford, when dispersing silica in water, as taught by Bomal, to
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form an aqueous slurry because silica in an aqueous dispersion provides
advantages in intended applications, such as a coating (Ans. 6).
Although the Examiner finds that Bomal is silent as to forming an
alkaline dispersion as claimed,5 the Examiner relies on Fukuda for teaching
the dispersion of silica in liquid with a pH value of 8–12 (id.) The Examiner
finds Fukuda teaches that this alkaline dispersion offers the benefit of
forming a stabilized silica suspension (id. at 7 (citing Fukuda ¶¶ 8–9); see
also Fukuda ¶¶ 5, 7).
Appellant argues that one skilled in the art, given Bomal’s teaching of
solid silica powder, would not have been motivated to combine:
(i) the teaching of Crawford directed to high solids aqueous
slurries of amorphous precipitated hydrated silica and (ii) the
teaching of Fukuda directed to aqueous dispersion of fumed
silica, and . . . subsequently form an alkaline dispersion of
Bomal’s solid silica powder instead of Bomal’s solid silica
powder or silica agglomerates . . . .

(App. Br. 9–10). Appellant further argues that there is no guidance in
Bomal to ignore its “principle teaching [sic]” of forming silica powder to
subsequently form an alkaline dispersion (id. at 10). Rather, Appellant
argues that one skilled in the art would combine Bomal and Crawford to
create an acidic slurry of precipitated particles (id. at 9) and “would not seek
out a teaching relating to the formation of an aqueous slurry of fumed silica
particles as described in the teaching of Fukuda.” (Id. at 10).

5 We note, however, that Bomal discloses a step of treating a base stock of
silicate concentrate in which “a basic agent is added to the reaction mixture
preferably until a pH value of the reaction mixture of between 6.5 and 10, in
particular between 7.2 and 8.6, is obtained,” (Bomal, ¶ 54 (emphasis added);
see also Bomal ¶¶ 46, 157, and claim 2).
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Appellant’s arguments are not persuasive. “Non-obviousness cannot
be established by attacking references individually where the rejection is
based upon the teachings of a combination of references. . . . [The
reference] must be read, not in isolation, but for what it fairly teaches in
combination with the prior art as a whole.” In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986).
On this record, Appellant has not adduced any persuasive technical
reasoning or evidence in response to the Examiner’s reasoned determination
that: (i) the elimination of the drying step as exemplified by Crawford for
(ii) the milled silica exemplified by Bomal in (iii) an alkaline dispersion as
exemplified by Fukuda, would have been prima facie obvious, as such a
combination appears to be the use of known prior art elements according to
their established functions (see, e.g., Ans. 6–12; see generally App. Br.,
Reply Br.; KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). (“The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.”)).
Specifically, Appellant has not shown error in the Examiner’s determination
that the skilled artisan would have appreciated that: (i) dispersing Bomal’s
silica powder into water provides a suitable format for a desired application
such as coating and (ii) adjusting such dispersion in a basic pH provides a
stabilized silica dispersion.
Furthermore, under the flexible inquiry set forth by the Supreme
Court, the PTO must take account of the inferences that a person of ordinary
skill in the art would make such as the inference that modification of
Bomal’s silica powder into an alkaline aqueous slurry may provide a
stabilized coating application. Ball Aerosol & Specialty Container, Inc. v.
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Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009). It is well settled
that a reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in this art would have reasonably been
expected to draw therefrom. See In re Fritch, 972 F.2d 1260, 1264–65 (Fed.
Cir. 1992).
In response to the Examiner’s reliance on Bomal’s teachings of the
dispersability of solid precipitated silica particles, Appellant argues that
Bomal’s intended use for the dispersion is as an elastomer reinforcement
(Reply Br. 4). Thus, according to Appellant, Bomal does not suggest the
need to form an aqueous dispersion to the ordinary skilled artisan (id.).
Appellant’s argument, however, is not persuasive because Bomal’s intended
use is irrelevant to determining the obviousness of claimed subject matter
drawn to a dispersion composition.  See, e.g., In re Self, 671 F.2d 1344, 1348
(CCPA 1982) (explaining that limitations not appearing in the claims cannot
be relied upon for patentability).
Accordingly, Appellant has not shown reversible error in the
Examiner’s determination that the claim limitations of “an alkaline
dispersion of porous surface modified anionic silica particles comprising:
(a) fluid, and (b) the surface modified anionic silica particles” (e.g., claim 1)
with the requisite maximal fractional occupied volume, are rendered obvious
when the applied prior art is considered as a whole.
Thus, we affirm rejection (a).
Dependent claims 9 and 11 fall with claim 1. 37 C.F.R.
§ 41.37(c)(iv). Thus, we affirm rejection (c) and (d).
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Rejection (b) under 35 U.S.C. § 103(a) (obviousness)
Appellant argues that the Examiner’s combination of Bomal,
Crawford and Fukuda would not lead the ordinary skilled artisan to
formulate a coating composition from an alkaline dispersion (App. Br. 13).
Appellant further argues that:
“there simply is no guidance in the teaching of Bomal that
would have lead one skilled in the art to seek out the teachings
of Crawford and Fukuda and subsequently form coating
formulations containing an alkaline slurry of Bomal’s silica
powder or agglomerates” (id.).

For the reasons expressed in the Final Office Action, the Answer and
above, Appellant has not shown error in the Examiner’s reasoned
determination that it would have been obvious for the skilled artisan, given
Bomal’s teaching of solid silica powder, to: (i) adopt Crawford’s silica
particles sized between about 0.3 to 3 microns because doing so enhances
coated paper gloss while not increasing coating paper viscosity and (ii) adopt
Fukuda’s alkaline dispersion of silica, and subsequently form an alkaline
dispersion of solid silica powder to formulate a coating composition (Final
Act. 3–4; Ans. 12).
On this record, Appellant has not identified reversible error in the
Examiner’s determination that the claim limitations, respectively, of: (i)
“wherein said particles possess median particle size in the range of about
0.05 to about 3.00 microns” (e.g., claim 3), (ii) “a coating formulation” (e.g.,
claim 32), and (iii) “a coating on a substrate” (e.g., claim 33) are rendered
obvious when the applied prior art is considered as a whole.
Thus, we affirm rejection (b).
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DECISION
The Examiner’s § 103 rejections are affirmed.
TIME PERIOD
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