11162058 (B.P.A.I. Sep. 28, 2010)

Ex Parte Hammond

Board of Patent Appeals and InterferencesSep 28, 2010

11162058 (B.P.A.I. Sep. 28, 2010)

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. 11/162,058 08/26/2005 Dennis L. Hammond APX-16103 3057 7609 7590 09/29/2010 RANKIN, HILL & CLARK LLP 23755 Lorain Road - Suite 200 North Olmsted, OH 44070-2224 EXAMINER KESSLER, CHRISTOPHER S ART UNIT PAPER NUMBER 1793 MAIL DATE DELIVERY MODE 09/29/2010 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte DENNIS L. HAMMOND ____________ Appeal 2009-015295 Application 11/162,058 Technology Center 1700 ____________ Before ADRIENE LEPIANE HANLON, BEVERLY A. FRANKLIN, and KAREN M. HASTINGS, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL1 Appellant appeals under 35 U.S.C. § 134 from the Examiner's rejection of claims 1 and 5-8. We have jurisdiction under 35 U.S.C. § 6(b). 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-015295 Application 11/162,058 2 STATEMENT OF THE CASE Claim 1 is representative of the subject matter on appeal and is set forth below: 1. A powder metal composition comprising: base metal particles; a solid phase lubricant that transforms into a viscous, lubricating liquid phase material when the powder metal composition is pressed; and a cryogenically micronized highly oxidized polymethylene wax having a D50 of less than about 40 μm, wherein the base metal particles, solid phase lubricant, optional additives and cryogenically micronized highly oxidized polymethylene wax are physically mixed together to form a substantially homogeneous flowable dry powder. The prior art relied upon by the Examiner in rejecting the claims on appeal is: Ozaki US 2004/0038067 A1 Feb. 26, 2004 Applicant's admitted prior art (Spec. p. 11 ¶ 32). "Cryo-Grind Size Reduction Systems" Product literature published by Air Products (2004). THE REJECTION Claims 1 and 5-8 are rejected under 35 U.S.C. §103(a) as being unpatentable over Ozaki, in view of Appellant’s admitted prior art, and Appeal 2009-015295 Application 11/162,058 3 "Cryo-Grind Size Reduction Systems" Product Literature published by Air Products. ANALYSIS Appellant argues that the Examiner’s reason as to why one having ordinary skill in the art would have selected highly oxidized polymethylene wax for use in the process according to Ozaki is based upon Appellant’s statement in the Specification that highly oxidized polymethylene wax is commercially available from Sasol Wax Americas. Appellant points out that Ozaki mentions "Fischer-Tropsch wax" as one of the many materials that can be used as the organic binder (see [0054]), but that Ozaki does not teach the use of highly oxidized polymethylene wax as claimed. Appellant also refers to a Declaration by Dennis L. Hammond to support his position that a highly oxidized wax is different from a non-modified polyethylene wax. Appellant therefore submits that the Examiner’s reason for modifying Ozaki is not a legally sufficient reason to support a rejection under 35 U.S.C. §103(a). Br. 13. We agree with Appellant that the Examiner’s rejection lacks the appropriate rationale to support a prima facie case of obviousness. “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l v. Teleflex, Inc., 550 U.S. 398, 419 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The fact finder must be aware “of the distortion caused by hindsight bias and must be cautious of Appeal 2009-015295 Application 11/162,058 4 arguments reliant upon ex post reasoning.” KSR, 550 U.S. at 420 (citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966) (warning against a “temptation to read into the prior art the teachings of the invention in issue”).) We fully agree with Appellant’s position that the mere fact that Appellant’s Specification teaches that Sasol Wax Americas manufactures highly oxidized polymethylene wax is not sufficient articulated reasoning having some rational underpinning to support a legal conclusion of obviousness. In view of the above, we therefore reverse the rejection. DECISION The rejection is reversed. REVERSED cam RANKIN, HILL & CLARK, LLP 23755 LORAIN ROAD – SUITE 200 NORTH OLMSTED, OH 44070-2224