Ex Parte Fantoni et al

Patent Trials and Appeals Board

Feb 27, 2019

13810918 - (D) (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/810,918 01/18/2013
22511 7590 03/01/2019
OSHA LIANG L.L.P.
TWO HOUSTON CENTER
909 FANNIN, SUITE 3500
HOUSTON, TX 77010
FIRST NAMED INVENTOR
Matteo Pantoni
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
17987/085001 5586
EXAMINER
BUIE-HATCHER, NICOLE M
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
03/01/2019 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):
docketing@oshaliang.com
escobedo@oshaliang.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTEO F ANTONI, MARCO APOSTOLO,
and GIOVANNI COMINO
Appeal 2018-004478
Application 13/810,918
Technology Center 1700
Before CATHERINE Q. TIMM, N. WHITNEY WILSON, and BRIAND.
RANGE, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision to reject claims 1-18. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
The claims are directed to a (per)fluoroelastomer composition
containing particles having a core/shell structure with the core consisting
1 Appellants identify the real party in interest as Solvay Solexis S.P.A.
Appeal Br. 4.
Appeal 2018-004478
Application 13/810,918
essentially of at least one alkaline-earth metal carbonate and the shell
consisting essentially of at least one Group IV transition metal compound
(see, e.g., claim 1 ), a method of fabricating shaped articles from the
composition (see, e.g., claim 9), a cured article obtained by curing the
composition (see, e.g., claim 11 ), and a semiconductor manufacturing device
comprising the cured article (see, e.g., claim 12). Claim 1 is illustrative:
1. A (per)fluoroelastomer composition comprising:
- at least one (per)fluoroelastomer [fluoroelastomer (A)]; and
- from 0.1 to 50 weight parts, per 100 parts by weight of said
fluoroelastomer (A) of alkaline-earth metal carbonate particles
[particles (P)], each said particle comprising:
(a) a core consisting essentially of at least one alkaline-
earth metal carbonate; and
(b) a shell consisting essentially of at least one Group IV
transition metal compound.
Appeal Br. 30 (claims appendix).
The Examiner rejects the claims as follows:
A. Claims 1-3, 6-12, 16, and 17 under 35 U.S.C. § I03(a) as
obvious over Higashino2 in view of Kishimoto 3 as evidenced
by Lind4;
B. Claims 4, 5, and 13-15 under 35 U.S.C. § I03(a) as obvious
over Higashino in view of Kishimoto and Apostolo 5;
C. Claims 1-3, 6-8, 11, and 16-18 under 35 U.S.C. § I03(a) as
2 Higashino et al., US 6,946,513 B2, issued September 20, 2005.
3 Kishimoto et al., EP 1 435 405 Al, published July 7, 2004.
4 Lind et al., US 7,737,035 Bl, issued June 15, 2010.
5 Apostolo et al., US 6,642,331 B2, issued November 4, 2003.
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Appeal 2018-004478
Application 13/810,918
obvious over Higashino in view of Alessio as evidenced by
Kishimoto and Lind.
OPINION
Rejections A and B
The Examiner's rejections of claims 1-3, 6-12, 16, and 17 under
35 U.S.C. § 103(a) as obvious over Higashino in view of Kishimoto as
evidenced by Lind and the rejection of claims 4, 5, and 13-15 over
Higashino in view of Kishimoto and further in view of Apostolo both rely on
the Examiner's finding of a reason to substitute Kishimoto's titania film-
coated powder for the filler taught by Higashino. Appellants have identified
a reversible error in that finding. Appeal Br. 13-14.
Kishimoto, as found by the Examiner, teaches titania film-coated
powders with a base that can be calcium carbonate. Final 4; Kishimoto ,r 12.
But the Examiner's finding that Kishimoto teaches adding the titania over
the calcium carbonate core to protect the core especially in acidic
environments is not supported by Kishimoto. Final 4, citing Kishimoto ,r 80.
Kishimoto is concerned with acid corroding the base particle (core)
during the process of making the titania-coated powder. Kishimoto ,r,r 3-8.
It is the method of making the powder, not its intended use, that is the focus
of Kishimoto' s invention. Kishimoto points out that iron powder ( and
calcium carbonate) are highly corrodible in acid environments and are, thus,
difficult to coat using methods that require an acidic environment, such as a
the prior art coating the base particle using a neutralizing hydrolysis reaction
of a metal salt. Kishimoto ,r,r 7-8, 12. Kishimoto's process keeps the base
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Appeal 2018-004478
Application 13/810,918
particle (such as a highly corrodible calcium carbonate base particle) in a
neutral or weakly alkaline state so this base particle can be coated with a
titania film without altering the base. Kishimoto ,r 80.
Contrary to the finding of the Examiner, Kishimoto does not teach
that the titania film is coated onto the base particle to protect the underlying
base particle especially in acidic environments. Final 4. It is the neutral or
weakly alkaline reaction environment that protects the calcium carbonate
core as it is coated with the titania film. The end product titania-coated base
particles of Kishimoto are added to plastics for their color properties.
Kishimoto teaches adding layers of titania to create light-interference
multilayered films on the base particle. Kishimoto ,r,r 2, 24, and 25.
Nor is Higashino concerned with protecting filler particles from acidic
corrosion. In fact, Higashino discloses using calcium carbonate fillers as an
acid acceptor to reduce the generation of anionic gas from molded articles.
Higashino, col. 4, 11. 3-8. Coating calcium carbonate fillers with a titania
film would impede its acid accepting property. Although we agree with the
Examiner that such acid acceptance is not the sole reason Higashino gives
for selecting the filler compound, the Examiner does not establish that there
is a suggestion within the prior art to select the core/shell titania-coated
calcium carbonate filler of Kishimoto for use in the polymer compositions of
Higashino.
The Examiner's finding of a reason to combine the teachings is based
on a faulty reading of Kishimoto. Because a preponderance of the evidence
fails to support the Examiner's finding, we do not sustain the Examiner's
rejection of claims 1-3, 6-12, and 17 as obvious over Higashino in view of
Kishimoto. The Examiner's application of Lind does not cure the defect.
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Appeal 2018-004478
Application 13/810,918
Because Apostolo does not cure the defect, we further do not sustain
the rejection of claims 4, 5, and 13-15 as obvious over Higashino,
Kishimoto, and Apostolo.
Rejection C
The Examiner also rejects claims 1-3, 6-8, 11, and 16-18 as obvious
over Higashino in view of Alessio as evidenced by Kishimoto and Lind.
Final 7; Ans. 6.
We also agree with Appellants that Alessio fails bridge the gaps
between Higashino and Kishimoto. Appeal Br. 24--25. Alessio's core/shell
powder is used to make dielectric films. Alessio ,r,r 2-3. The Examiner
again relies on Kishimoto to provide evidence of a reason to use the
core/shell powder for use in acidic environments. Final 8. It remains that a
preponderance of the evidence fails to support the Examiner's finding of a
reason to substitute the filler of Higashino with the core/shell powder of
Alessio based on the teachings of Kishimoto.
CONCLUSION
We do not sustain the Examiner's rejections.
DECISION
The Examiner's decision is reversed.
REVERSED
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