MONSHEIMER, Sylvia et al.

Patent Trials and Appeals Board

Apr 9, 2020

13541181 - (D) (P.T.A.B. Apr. 9, 2020)

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.
13/541,181 07/03/2012 Sylvia MONSHEIMER 400342US99 2459
22850 7590 04/09/2020
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
PATEL, RONAK C
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
04/09/2020 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte SYLVIA MONSHEIMER, WOLFGANG DIEKMANN,
FRANZ-ERICH BAUMANN, SIGRID HESSEL-GELDMANN,
KRISTIANE WARNKE, HEIKE STEMMER, and STEFAN ALTKEMPER
________________

Appeal 2018-007447
Application 13/541,181
Technology Center 1700
________________

Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–5, 7, 9–12, 15, 16, and 22 under 35 U.S.C.
§ 103(a) as unpatentable based on at least the combined prior art of Jacobson
(US 5,562,978; Oct. 8, 1996), Simon (US 2008/0258346 A1; Oct. 23, 2008),
with either one of Eckel (US 2008/0132617 A1; June 5, 2008) or Elliott (US

1 We use the word “Appellant” to refer to the “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies Evonik Degussa GmbH as the real
party in interest (Appeal Br. 2).

Appeal 2018-007447
Application 13/541,181

2
2008/0124576 A1; May 29, 2008), and also with Muhlebach (WO
2010/125024 A1; Nov. 4, 2010).2 An oral hearing was conducted on March
26, 2020. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Claim 1 is illustrative of the claimed subject matter (emphasis added
to highlight a key limitation in dispute):
1. A powder, comprising composite particles:
wherein the composite particles, comprise:
a core glass particle having a d50 median diameter of 3 to
100 µm; and
at least a partial coating of a polymer on the core;
wherein a ratio of the d50 median diameter of the composite
particles to the d50 median diameter of the core glass particles is
from 1.01 to 5.0, and
wherein a number average weight ratio of the polymer
coating to the core glass particle, is from 1 to 30.

OPINION
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103(a). In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability.”). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art or the inferences and creative

2 The rejection of claim 9 includes additional prior art (e.g., Final Action 6).
A discussion of this rejection is unnecessary in the disposition of this appeal.
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Application 13/541,181

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steps a person of ordinary skill in the art would have employed. In re Fine,
837 F.2d 1071, 1074 (Fed. Cir. 1988); KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007).
We need to address only independent claim 1 which recites a powder
of polymer coated composite particles “wherein a number average weight
ratio of the polymer coating to the core glass particle, is from 1 to 30.” This
means that the weight of the polymer coating is at least 50% by weight of
the core glass particle (1:1) up to 96.7% (30:1).
The Examiner admits that Jacobson does not teach or suggest this
feature; and relies upon Muhlebach or Simon for this feature (Final Action 4,
5).
Appellant argues that Jacobson expressly teaches thin polymer
coatings of no more than 8 wt%, with a preferred upper limit of 5 wt%,
whereas claim 1 requires at least an amount 6.25 times greater, and up to 10
times greater, than the preferred amount of Jacobson (Appeal Br. 7;
Jacobson, col. 2, ll. 20–22). Appellant further argues that there is no reason
one would have used the polymeric content of Simon which is directed to a
dry blend of polymer powder and glass beads for the coating of Jacobson’s
polymer coated particles (Appeal Br. 7, 8). Appellant also contends that
there is no reason to use a polymeric coating in the recited amount on
Jacobson’s inorganic particles based on Muhlebach since 1) “in complete
contradiction to Jacobson”, Muhlebach has core particles A of an organic
polymer (Appeal Br. 10) and 2) the Examiner relies upon passages for the
particles B of Muhlebach that teach that the core-shell particle is 55–97 wt%
of inorganic material surrounded by 3–45 wt% of shell polymer (Appeal Br.
11; Final Action 4, relying on Muhlebach p. 17, ll. 10–15).
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Application 13/541,181

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A preponderance of the evidence supports Appellant’s position that
the Examiner has not pointed to any evidence to adequately establish that the
applied prior art teaches or suggests the required weight ratio of a polymer
coating to glass bead core for the particles of Jacobson. The Examiner has
not provided adequate evidence that one of ordinary skill in the art would
have considered an amount of polymeric coating as high as 50 to 96.7
percent by weight of its inorganic particles to be suitable for Jacobson’s
purpose which teaches a maximum of 8 wt%. See In re Sebek, 465 F.2d
904, 907 (CCPA 1972) (where the prior art indicates that an optimum should
be sought within a range, the determination of optimum values outside that
range may not be obvious).
In light of these circumstances, the Examiner has not shown that each
and every limitation of the claim is either described or suggested by the prior
art or would have been obvious based on the knowledge or inferences and
creativity of the ordinary artisan. See In re Fine, 837 F.2d at 1074; see also
In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on
section 103 clearly must rest on a factual basis, and these facts must be
interpreted without hindsight reconstruction of the invention from the prior
art.”).
It further appears that the proposed modification of Jacobson based on
either one of Simon or Muhlebach for this disputed feature would be based
on improper hindsight reconstruction. The fact finder must be aware “of the
distortion caused by hindsight bias and must be cautious of arguments reliant
upon ex post reasoning.” KSR, 550 U.S. at 421 (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”)).
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Application 13/541,181

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The Examiner does not rely upon any of the other references to cure
these deficiencies. Accordingly, we reverse the § 103(a) rejections on
appeal.

CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 7, 10–12,
15, 16, 22 103(a)
Jacobson, Simon,
Eckel, Elliot,
Muhlebach

1–5, 7,
10–12, 15,
16, 22
9 103(a)
Jacobson, Simon,
Eckel, Elliot,
Muhlebach, Leuterer

9
Overall
Outcome

1–5, 7, 9–
12, 15, 16,
22

REVERSED