Ex Parte Hudson et al

Patent Trial and Appeal Board

Apr 30, 2018

13956532 (P.T.A.B. Apr. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/956,532 08/01/2013
157 7590 05/02/2018
Covestro LLC
1 Covestro Circle
PITTSBURGH, PA 15205
FIRST NAMED INVENTOR
Kevan Hudson
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.
BMS132036/MD12-l l 8268
EXAMINER
ZEMEL, IRINA SOPJIA
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
05/02/2018 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):
veronica. thompson@covestro.com
US-IPR@covestro.com
laura.finnell@covestro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEV AN HUDSON, JEFFREY F. DORMISH,
and MICHAEL K. JEFFRIES 1
(Applicant: BA YER MATERIALSCIENCE LLC.)
Appeal2017---008661
Application 13/956,532
Technology Center 1700
Before BEYERL YA. FRANKLIN, BRIAND. RANGE, and LILAN REN,
Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants request our review under 35 U.S.C. § 134(a) of the Examiner's
decision rejecting claims 1-13 and 24--30. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants' subject matter on appeal and is set forth
below:
1. A coated particle comprising:
(a) a substrate particle having a particle size of no more than 3 mesh; and
(b) a coating disposed over at least a portion of the particle,
wherein the coating comprises a crystalline or semicrystalline
polyester/polyurethane having a decrystallization temperature of at least
35°c.
1 Appellant identifies the real party in interest as COVESTRO LLC.
Appeal2017-008661
Application 13/956,532
The Examiner relies on the following prior art references as evidence of
unpatentability:
Onder
Nguyen
US 2003/0139509 Al
US 2006/0065397 Al
THE REJECTION
July 24, 2003
Mar. 30, 2006
Claims 1-13 and 24--30 are rejected under pre-AIA 35 U.S.C. § I03(a) as
being unpatentable over Nguyen in view of Onder.
ANALYSIS
Upon consideration of the evidence and each of the respective positions set
forth in the record, we are persuaded of error in the prior art rejection for essentially
the reasons set forth in the record by Appellants, and add the following for
emphasis.
At issue is the claim element pertaining to a particle size of "no more than 3
mesh". As pointed out by Appellants, Nguyen does not teach this claim range. In
the Answer, the Examiner states that Appellants are confused about "mesh" sizes,
and discusses particle size and states that Nguyen teaches the particle size. Ans. 2-
3. However, when Appellants discuss particle size on page 6 of the Appeal Brief,
they meant it in terms of mesh size, i.e., particles size measured in terms of mesh
size. Ultimately, the focus need be on the claim element of particle size of "no more
than 3 mesh size", which Appellants argue is not suggested by the size range of
Nguyen. Appeal Br. 6. We agree that, based on the evidence before us, the
Examiner has not adequately explained how the cited references render obvious
particles of a "size of no more than 3 mesh." We are thus constrained to reverse the
rejection.
2
Appeal2017-008661
Application 13/956,532
The rejection is reversed.
DECISION
ORDER
REVERSED
3