Ex Parte Ruppert et al

Board of Patent Appeals and Interferences

Jul 16, 2012

11100232 (B.P.A.I. Jul. 16, 2012)

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.
11/100,232 04/06/2005 Klaus Ruppert 100727-86 - KGB 3337
27384 7590 07/17/2012
Briscoe, Kurt G.
Norris McLaughlin & Marcus, PA
875 Third Avenue, 8th Floor
New York, NY 10022
EXAMINER
KOSLOW, CAROL M
ART UNIT PAPER NUMBER
1734
MAIL DATE DELIVERY MODE
07/17/2012 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 KLAUS RUPPERT,
ANDREAS GRUNDLER,
and ALBERT ERDRICH
__________

Appeal 2010-007216
Application 11/100,232
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, BEVERLY A. FRANKLIN, and
JAMES C. HOUSEL, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-007216
Application 11/100,232

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A. STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134 from an Examiner’s
decision finally rejecting claims 1 and 5-10 under 35 U.S.C. § 103(a) as
unpatentable over Hengchang.1,2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
The subject matter on appeal is directed to agglomerated inorganic fillers.
Claims 1 and 10, the independent claims on appeal, are illustrative of the subject
matter on appeal.
1. Agglomerated inorganic fillers comprising agglomerates
comprising a plurality of glass particles melted together at their
boundary surfaces, the agglomerates ranging in size from 0.5 to
50 µm, and the glass particles having a particle size of 200 to 7,000
nm.
10. Agglomerated inorganic fillers comprising agglomerates of
glass particles, each of the glass particles comprising a melted area
on its boundary surface, the melted area on the boundary surface of
each glass particle being melted to the melted area on the boundary
surface of an adjacent glass particle, the agglomerates ranging in size
from 0.5 to 50 µm, and the glass particles having a particle size of 200
to 7,000 nm.
Br., Claims Appendix (emphasis added).3

1 US 5,707,440 issued January 13, 1998.
2 Claims 2 and 4 were also finally rejected under 35 U.S.C. § 103(a) as
unpatentable over Hengchang. However, the Examiner withdrew the rejection of
claims 2 and 4 in the Examiner’s Answer dated December 7, 2009 (“Ans.”), at 2-3.
3 Appeal Brief dated September 30, 2009.
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Application 11/100,232

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B. DISCUSSION
1. Claim 1
The Examiner finds Hengchang discloses an inorganic filler for dental
materials comprising a sintered agglomerate of macro-fillers and micro-fillers.
Ans. 3. Hengchang Figure 1 illustrates an agglomerate according to the disclosed
invention comprising a macro-filler particle 10 which forms the core of the
agglomerate and micro-filler particles 20 bonded to the core. Hengchang, col. 3,
ll. 11-13. The Examiner finds that during sintering, the macro-filler melts or starts
to melt and the micro-fillers remain in the solid state. Ans. 4; Hengchang, col. 3,
ll. 65-67. The Examiner finds the melted macro-filler fuses the particles of the
agglomerate together resulting in a plurality of particles “melted together at their
boundary surfaces” as recited in claim 1. Ans. 4.
The Appellants argue the particles comprising Hengchang’s agglomerates
are not “melted together at their boundary surfaces” as recited in claim 1 because
the micro-filler is not melted. Br. 8 (emphasis added).
The sole dispute in this rejection is whether the macro-filler particle and the
micro-filler particles disclosed in Hengchang are “melted together at their
boundary surfaces” as recited in claim 1.
During examination, the USPTO gives claims “their broadest reasonable
construction consistent with the specification”. In re Icon Health and Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007). The Appellants do not define the phrase
“melted together” in the Specification. However, the Appellants disclose that
agglomerates may be formed from two different glasses wherein a first glass
creates a solder for a second glass which melts at a higher temperature than the
Appeal 2010-007216
Application 11/100,232

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first glass. Spec. 5, ll. 6-10; see also Ans. 6, ll. 9-12. Thus, giving the phrase
“melted together” its broadest reasonable interpretation consistent with the
Specification, we interpret claim 1 as reciting that the glass particles are joined
together at their boundary surfaces by melting one or more of the particles.
Significantly, the Appellants have not directed us to any evidence which requires a
different interpretation.
Hengchang discloses that during sintering, the macro-filler melts and the
micro-fillers are bonded to the macro-filler at its melted surface. See, e.g.,
Hengchang, col. 3, ll. 11-13, 65-67. Thus, we find that the macro-filler and the
micro-fillers described in Hengchang are joined together at their boundary surfaces
by melting as required by claim 1.
For the reasons set forth above, the § 103(a) rejection of claim 1 is affirmed.
The Appellants do not present separate arguments in support of the
patentability of dependent claims 5-9. Therefore, the § 103(a) rejection of claims
5-9 is also affirmed.
2. Claim 10
According to the Appellants’ Specification, the agglomerated inorganic
fillers are formed as follows:
A preparation of 200 to 7,000 nm large inorganic glass particles
by grinding large particles,
B thermal treatment by partial melting at 200 to 1,300 ºC
(calcination of the glass particles),
C cooling down fast, if necessary,
D grinding the thermally agglomerated material.
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Application 11/100,232

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Spec. 4, ll. 9-17. The Appellants disclose that “agglomeration takes place by using
controlled thermal treatment.” Spec. 3, l. 27.
We interpret claim 10 as directed to the molten intermediate formed in step
B, i.e., “each of the glass particles comprising a melted area on its boundary
surface.” Br., Claims Appendix (emphasis added).
There is no dispute on this record that the agglomerate disclosed in
Hengchang is formed by sintering and the sintering temperature is selected such
that the macro-filler melts and the micro-filler remains in the solid state. Ans. 4;
Hengchang, col. 3, ll. 65-67. Thus, Hengchang cannot be said to describe the
molten intermediate recited in claim 10 wherein each of the glass particles forming
the agglomerate comprises a melted area on its boundary surface. See Br. 6-7.
For the reasons set forth above, the § 103(a) rejection of claim 10 is
reversed.
C. DECISION
The rejection of claims 1 and 5-9 under 35 U.S.C. § 103(a) as unpatentable
over Hengchang is affirmed.
The rejection of claim 10 under 35 U.S.C. § 103(a) as unpatentable over
Hengchang is reversed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a) (2011).
AFFIRMED-IN-PART

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