Ex Parte Lodyga et al

Patent Trial and Appeal Board

Jul 18, 2016

10652283 (P.T.A.B. Jul. 18, 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.
10/652,283 08/29/2003 David Lodyga 131046-5 1782
42248 7590 07/19/2016
MOMENTIVE PERFORMANCE MATERIALS INC.-Quartz
c/o DILWORTH & BARRESE, LLP
1000 Woodbury Road
Suite 405
Woodbury, NY 11797
EXAMINER
FISHER, ABIGAIL L
ART UNIT PAPER NUMBER
1616
MAIL DATE DELIVERY MODE
07/19/2016 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 LODYGA, JOSEPH W. TERESHKO, AJIT SANE, and
THOMAS FOX
____________

Appeal 2014-000879
Application 10/652,283
Technology Center 1600
____________

Before DONALD E. ADAMS, ULRIKE W. JENKS, and
JACQUELINE T. HARLOW, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134(a) involves claims 1–19 (Reply Br.
2). Examiner entered rejections under 35 U.S.C. § 103(a). We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
The claims are directed to compositions that consist essentially of or
comprise spherical particles of agglomerated boron nitride; processes of
forming a boron nitride powder, and a powder comprising substantially

1 Appellants identify the Real Party in Interest as “Momentive Performance
Materials Inc.” (App. Br. 3).
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spherical agglomerated particles that consist essentially of non-spherical
boron nitride particles bound together by an organic binder (see Appellants’
independent claims 1, 6, 10, 12, and 13). Claims 1, 6, 10, 12, and 13 are
representative and reproduced in the Claims Appendix of Appellants’ Brief.
Claims 1–5, 10, 11, and 13–19 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Dittrich,2 Eckert,3 and
Kuwabara.4
Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Dittrich, Eckert, Kuwabara, and
Hirokawa.5
Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Dittrich, Eckert, Kuwabara, Hirokawa,
and Goldsmith.6
Claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Dittrich, Eckert, Kuwabara, and Goldsmith.

ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?

2 Ferdinand J. Dittrich, US 3,617,358, issued Nov. 2, 1971.
3 Eckert et al., US 6,022,395, issued Feb. 8, 2000.
4 Kuwabara et al., JP 10-194711, published July 28, 1998 (English language
translation of record).
5 Hirokawa et al., US 5,427,698, issued June 27, 1995.
6 Robert L. Goldsmith, US 5,106,502, issued Apr. 21, 1992.
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FACTUAL FINDINGS (FF)
FF 1. Dittrich “relates to an improved flame spray powder, to a process for
its production, and to a flame spray process utilizing the same” (Dittrich 1:
3–5; Ans. 2).
FF 2. Dittrich discloses a process wherein,
finely divided flame spray material suspended in a slip or slurry
of liquid, preferably water, with a suitable binder and preferable
auxiliary agents, is atomized and the atomized suspension dried
in a hot gas stream, forming the coarser flame spray powder,
the individual particles of which are of substantially spheroid
shape, have a size between about 20 mesh and 1 micron, and
are formed of a multiple number of subparticles bound together
without fusion by the spray dried binder, and which have a
crush resistance of at least 0.7 grams.
(Dittrich 2: 2–11; Ans. 2–3.)
FF 3. Dittrich discloses that “film-forming organic resins which are soluble
in the liquid of the slip, may be used” as the binder “to form an agglomerate
of the required strength and hardness” (Dittrich 3: 66–68; Ans. 3).
FF 4. Dittrich discloses that “the starting finely divided material utilized in
the formation of the slip [may be] any of the known or conventional flame
spray materials, or any known combinations thereof . . . for example . . .
boron nitride for ‘self-lubricating’ coatings with very low friction
coefficient” (Dittrich 2: 12–75; Ans. 3).
FF 5. Examiner finds that “Dittrich is silent as to the tap density of the
particles” and relies on Eckert and Kuwabara to make up for this deficiency
in Dittrich (Ans. 4).
FF 6. Eckert “relates to the manufacture of molybdenum powders . . .
having an increased tap density” (Eckert 1: 5–9 (emphasis added)).
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FF 7. Eckert discloses that “tap density is more closely related to porosity
than with particle size,” wherein “a decrease in the porosity brings about an
increase in the tap density” (Eckert 3: 35–4: 1; Ans. 4; see Dittrich 4: 61–66
(“binder materials which act as, or which contain, fluxes such as sodium
silicate, boric acid, borax or the like, may be used to perform a fluxing
function in order to aid interparticle cohesion, adhesion to the substrate, and
produce a superior coating of lesser porosity and higher hardness”); Ans. 5).
FF 8. Examiner finds that Kuwabara discloses “boron nitride powders
[that] have a tap density of 0.5 g/ml and a particle diameter of [] 3 to 6
microns” (Ans. 4; see generally Kuwabara ¶¶ 12, 19, and 39).
FF 9. Examiner finds that the combination of Dittrich, Eckert, and
Kuwabara fails to suggest “incorporating the powders into a composition
comprising a polymer selected from the group consisting of a polyester,
epoxy and polyamide” and relies on Hirokawa to make up for this deficiency
in that the combination of Dittrich, Eckert, and Kuwabara (Ans. 10).
FF 10. Examiner finds that the combination of Dittrich, Eckert, and
Kuwabara, with or without Hirokawa, fails to suggest a metal binder, such as
“nickel acetate, aluminum acetate or titanium acetate” and relies on
Goldsmith to make up for this deficiency in the combination of Dittrich,
Eckert, and Kuwabara, with or without Hirokawa (Ans. 8 and 13).

ANALYSIS
The combination of Dittrich, Eckert, and Kuwabara:
Based on the combination of Dittrich, Eckert, and Kuwabara,
Examiner concludes that, at the time Appellants’ invention was made, it
would have been prima facie obvious to “utilize boron nitride as the
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particular particles” to prepare spherical agglomerated boron nitride particles
(Ans. 4). In this regard, Examiner finds that Dittrich suggests the same
process of preparing spherical agglomerated boron nitride particles as is
disclosed in Appellants’ Specification (see Ans. 18). We are not persuaded.
Notwithstanding Examiner’s assertion to the contrary, Examiner
failed to establish an evidentiary basis on this record to support the
conclusion that Dittrich’s process of preparing spherical agglomerated boron
nitride particles is the same as is disclosed in Appellants’ Specification. In
this regard, we find that (1) Examiner’s rejection does not separately
compare Appellants’ process claims to Dittrich’s process and (2) Examiner’s
only citation to Appellants’ Specification is directed to a disclosure “that
[when] the acetate (which comes from the binder) is spray dried it
decomposes to form a hydroxide decomposition layer” (see Ans. 7, citing
Spec. 7; cf. Appellants’ claim 10; FF 2–4). Simply stated, Examiner failed
to establish an evidentiary basis on this record to support a conclusion that
Dittrich’s process and Appellants’ disclosed and/or claimed process are the
same (cf. Ans. 18).
For the foregoing reasons, we are not persuaded by Examiner’s
assertion that Dittrich’s spherical agglomerated particles would necessarily
have a tap density of from about 0.287 to about 0.632 g/cc as required by
Appellants’ claimed invention (see id.). In this regard, Examiner finds that
“Dittrich is silent as to the tap density of the particles” (FF 5).
We recognize, but are not persuaded by, Examiner’s reliance on
Eckert’s disclosure of the relationship between porosity and tap density;
specifically that “a decrease in the porosity brings about an increase in the
tap density” (FF 7). As Appellants correctly point out, Eckert “relates to the
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manufacture of molybdenum powders . . . having an increased tap density”
(App. Br. 9; see id. at 10; see FF 6). Examiner, however, failed to establish
a relationship between molybdenum powders and agglomerated boron
nitride particles. Nevertheless, we recognize that Dittrich suggests that
certain binding agents “may be used to perform a fluxing function in order to
. . . produce a superior coating of lesser porosity and higher hardness” (FF
7). Examiner, however, failed to establish that a person of ordinary skill in
this art would have reasonably expected that Dittrich’s agglomerates, even if
produced using the specific binder materials identified by Dittrich, would
have a tap density from about 0.287 to about 0.631 g/cc as is required by
Appellants’ claimed invention (see Appellants’ claims 1, 10, and 13; cf. FF
7). In this regard, Examiner failed to establish why a person of ordinary
skill in this art would manufacture spherical agglomerated particles having
the tap density required by Appellants’ claimed invention.
Examiner’s reliance on Kuwabara fails to make up for the foregoing
deficiencies (see FF 8). As Appellants explain “Kuwabara relates to boron
nitride powders not agglomerates” (App. Br. 9; see id. at 11). “There is
nothing in Kuwabara to suggest that [Kuwabara’s] powders [if used in
Dittrich’s process] . . . would necessarily provide the claimed tap density for
[Appellants’] claimed agglomerates” (App. Br. 11). Further,
notwithstanding Examiner’s findings that “a decrease in [] porosity brings
about an increase in [] tap density” and that particular binder materials may
produce higher hardness (FF 7); Examiner failed to establish, as discussed
above, an evidentiary basis on this record to support a conclusion that a
person of ordinary skill in this art would have sought to obtain spherical
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agglomerated boron nitride particles having a tap density of from about
0.287 to about 0.631 g/cc, as required by Appellants’ claimed invention.
The combination of Dittrich, Eckert, Kuwabara, with Hirokawa and/or
Goldsmith:
Based on the combination of Dittrich, Eckert, Kuwabara, and
Hirokawa, Examiner concludes that, at the time Appellants’ invention was
made, it would have been prima facie obvious “to utilize the powders of
Dittrich in combination with a[] synthetic resin to form a coating
composition for lubrication” (Ans. 11).
Based on the combination of Dittrich, Eckert, Kuwabara, and
Goldsmith, with or without Hirokawa, Examiner concludes that, at the time
Appellants’ invention was made, it would have been prima facie obvious “to
combine the teachings of Dittrich, Eckert [], Kuwabara [] and Goldsmith[,
with or without Hirokawa,] and utilize binders such as metal acetates” (Ans.
9 and 13).
In each rejection, however, Examiner failed to establish that Hirokawa
and or Goldsmith makes up for the foregoing deficiency in the combination
of Dittrich, Eckert, and Kuwabara (see App. Br. 12–15).

CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness. The rejections of record are reversed.

REVERSED