Ex Parte Kretzschmar et al

Patent Trials and Appeals Board

Apr 4, 2019

13642695 - (D) (P.T.A.B. Apr. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/642,695 03/21/2013
30634 7590 04/05/2019
GRACEGMBH
7500 GRACE DRIVE
COLUMBIA, MD 21044
FIRST NAMED INVENTOR
Markus Kretzschmar
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.
W9919-0l 1471
EXAMINER
FORREST, MICHAEL
ART UNIT PAPER NUMBER
1732
MAIL DATE DELIVERY MODE
04/05/2019 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 MARKUS KRETZSCHMAR and HORST HERRIG
Appeal2018-004308
Application 13/642,695
Technology Center 1700
Before KAREN M. HASTINGS, JEFFREY B. ROBERTSON, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1 and 3-10 under 35 U.S.C. § 103(a) as being
unpatentable over at least the basic combination of Aldcroft (US 5,643,624,
issued Jul. 1, 1997), Ito (US 6,565,905 Bl, issued May 20, 2003, and
Kuhlmann (US 2002/0102198 Al, published Aug, 1, 2002). 2 We have
1 The real party in interest is stated to be "W.R. Grace & Co." (Appeal Br.
3).
2 The Examiner also makes a new ground of rejection in the Answer using
these same references but with "reasoning for the proposed combination ...
Appeal2018-004308
Application 13/642,695
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b ).
We AFFIRM.
Claim 1 is representative of the claimed invention ( emphasis added to
highlight key disputed limitations):
1. A method of making porous inorganic oxide particles, said
method comprising the steps of
forming precipitated inorganic oxide particles within a reaction
mixture while mixing under high shear conditions, wherein said
forming step comprises:
introducing inorganic oxide particle-forming reagents into a
reaction vessel, while mixing under high shear conditions, for a first
length of time of less than 20 minutes so as to result in a first reaction
mixture;
following the first length of time, halting introduction of
inorganic oxide particle-forming reagents into the reaction vessel
while continuing said mixing under high shear dispersion force for a
second length of time of less than 120 minutes;
following the second length of time, introducing the inorganic
oxide particle-forming reagents into the reaction vessel, while mixing
under high shear, for a third length of time of less than 60 minutes so
as to result in a second reaction mixture; and
following the third length of time, acidifying the second
reaction mixture under high shear dispersion force so as to reduce a
pH of the second reaction mixture to about 4.0 resulting in a third
reaction mixture;
separating the precipitated inorganic oxide particles from liquid
within the third reaction mixture;
washing the precipitated inorganic oxide particles to produce
washed precipitated inorganic oxide particles; and rapid drying the
slightly modified" as stated by Appellants (Reply Br. 2) (Ans. 8-11). The
Examiner also applies additional prior art to dependent claims 4 and 10
(Ans. 6-8, 11-13).
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Application 13/642,695
washed precipitated inorganic oxide particles to form dried porous
inorganic oxide particles, said rapid drying comprising subjecting the
precipitated inorganic oxide particles to a rapid drying temperature
ranging from about 300°C to about 800°C for a rapid drying period
of less than 5 minutes so as to form particles having a single point
nitrogen adsorption surface area of at least about 650 m2/g.
Appellants mainly focuses the argument on independent claim 1
(Appeal Br. 12-14). While they also separately address claims 4, 7, and 10
(Appeal Br. 14--19), these remarks are largely redundant to the arguments
already presented for claim 1.
ANALYSIS
Upon consideration of the evidence on this record and each of
Appellants' contentions, we find that the preponderance of evidence on this
record supports the Examiner's conclusion that the subject matter of
Appellants' claims is unpatentable over the applied prior art. We sustain the
Examiner's§ 103 rejections essentially for the reasons set out by the
Examiner in the Answer.
We add the following for emphasis.
Appellants' main argument is that one of ordinary skill in the art
would not have combined the teachings of the prior art as proposed by the
Examiner absent the use of impermissible hindsight ( Appeal Br. 12, 13;
Reply Br. 6, 10). Specifically, Appellants argue that one would not have
modified Aldcroft to use Ito's flash drying processing conditions nor to use
Kuhlmann's two part precipitation step inclusive of halting reactants for a
period of time "in light of the different goals within each" reference (Reply
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Application 13/642,695
Br. 5; Appeal Br. 12). Appellants point out in support of their position that
Kuhlmann uses a spray drying step (Appeal Br. 12, 15) and desires silica
particles with a surface area of 400-600 m2/g versus the "at least about 650
m2/g" recited in claim 1 (e.g., Reply Br. 3).
Appellants' arguments are not persuasive of error in the Examiner's
rejection. Appellants' arguments mainly address the references separately
and do not fully address the rejection and the inferences of these references
that are presented on this record for our review.
It has been established that "the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." KSR Int'! Co. v. Teleflex
Inc., 550 U.S. 398,418 (2007). Likewise, it is also well settled that a
reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in the art would have reasonably been
expected to draw therefrom. See In re Fritch, 972 F.2d 1260, 1264---65 (Fed.
Cir. 1992).
The Examiner aptly points out that Ito merely exemplifies known
process conditions for flash drying silica particles (Ans. 14), and as such the
use of these conditions in Aldcroft's flash drying step would have been
prima facie obvious, using no more than ordinary creativity. KSR Int 'l Co.
550 U.S. at 421 ("A person of ordinary skill is also a person of ordinary
creativity, not an automaton."). The Examiner also point out that Kuhlmann
teaches flash drying as an alternative to spray drying, which refutes
Appellants' position that one would have only used Kuhlmann's spray dry
process (e.g. Ans. 14; Appeal Br. 15 (discussing claim 7)). Appellants have
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Appeal2018-004308
Application 13/642,695
also not persuasively disputed the Examiner's determination that one of
ordinary skill in the art, using no more than ordinary creativity, would have
modified the precipitation step in Aldcroft such that the flow of reactants is
halted for a period of time as exemplified in Kuhlmann to be known as a
process step for precipitation of silica particles.
Notably, the applied prior art as a whole exemplifies that one of
ordinary skill in the art would have been able to predictably modify
processing conditions so as to produce precipitated silica particles with
surface areas ranging from as low as 400 m2/g to as high as 1100 m2/g.
Appellants have not directed us to any criticality ( or unexpected results) of
any specific step to achieve the claimed surface area of at least 650 m2/g.
Notably, Appellants' Specification states "[i]t is believed (without being
bound therewith to any particular theory) that the use of the high shear
mixing" during all of the precipitation steps "allows for control the particle
size in the slurry . . . leading to, or at least supporting, the resulting desirable
properties of the present invention particles" (Spec. ,r 42; also Spec. ,r,r 43,
44). As pointed out by the Examiner, Kuhlmann exemplifies use of shear
mixing during the entire precipitation time ( e.g. Ans. 5; Kuhlmann ,r 16). In
light of these circumstances, mere attorney's arguments in a brief that one of
ordinary skill the art would not have attempted to use Kuhlmann' s
precipitation process steps inclusive of halting reactants in Aldcroft (which
already teaches achieving surface areas as high as 1100 m2 / g) cannot take
the place of evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
To the extent Appellants separately address dependent claims 4, 7,
and 10, the arguments are essentially redundant to those already presented,
and thus do not show error in the Examiner's position (Appeal Br. 14-20).
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Application 13/642,695
Accordingly, for all the reasons stated above and in the Answer, and
taking into account "the inferences and creative steps that a person of
ordinary skill in the art would employ," KSR Int'!, 550 U.S. at 418,
Appellants have not shown reversible error in the Examiner's obviousness
determination.
We sustain the Examiner's§ 103 rejections on appeal.
The decision of the Examiner is affirmed.
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
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