Vogel, Roland et al.

Patent Trials and Appeals Board

Oct 10, 2019

13811663 - (D) (P.T.A.B. Oct. 10, 2019)

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.
13/811,663 01/22/2013 Roland Vogel 29012/47356 4227
4743 7590 10/10/2019
MARSHALL, GERSTEIN & BORUN LLP
233 SOUTH WACKER DRIVE
6300 WILLIS TOWER
CHICAGO, IL 60606-6357
EXAMINER
MANGOHIG, THOMAS A
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
10/10/2019 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):
mgbdocket@marshallip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROLAND VOGEL, MARIJAN VUCAK, and
CHRISTOPH NOVER
____________

Appeal 2019-001060
Application 13/811,663
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, MICHAEL G. McMANUS, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 1–8, 10, 12–14, and 18–212. We
have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to the “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Schaefer Kalk GmbH & Co. KG as
the real party in interest. Appeal Brief filed April 30, 2018 (“App. Br.”), 3.
2 Final Office Action entered September 7, 2017 (“Final Act.”), 1.
Appeal 2019-001060
Application 13/811,663

2
CLAIMED SUBJECT MATTER
Appellant claims a dry liquid (independent claims 1 and 21) and a
process for producing a dry liquid (independent claim 14). App. Br. 5–8.
Claim 1 illustrates the subject matter on appeal and is reproduced below
with contested subject matter italicized:
1. A dry liquid, comprising:
at least one additive having a molar mass greater than 20
g/mol, a melting temperature lower than 500 °C, and a boiling
temperature, measured at 101325 Pa, higher than 100 °C, and
at least one plate-like calcium carbonate as a carrier
material, wherein:
the at least one plate-like calcium carbonate is a
precipitated calcium carbonate and has an oil number greater
than 50 g/100 g of the at least one plate-like calcium
carbonate,
the at least one plate-like calcium carbonate comprises a
calcitic calcium carbonate,
the at least one plate-like calcium carbonate has a
specific surface area (BET) ranging from 5 m2/g to 20 m2/g,
a fraction of the calcitic calcium carbonate is greater than
50% by weight relative to a total weight of the at least one
plate-like calcium carbonate, and
the dry liquid contains, relative to a total weight of the
dry liquid:
10.0% by weight to 90.0 % by weight of the at
least one additive, and
90.0% by weight to 10% by weight of the at least
one plate-like calcium carbonate, wherein a sum of fractions of
the at least one additive and the at least one plate-like calcium
carbonate is equal to at least 75.0% by weight.

App. Br. 34 (Claims Appendix) (emphasis added).
Independent claim 14 recites a process for producing a dry
liquid that comprises, in part, at least one plate-like calcium carbonate
having an oil number greater than 50 g/100 g and a specific surface
Appeal 2019-001060
Application 13/811,663

3
area (BET) ranging from 5 m2/g to 20 m2/g. Independent claim 21
recites a dry liquid comprising, in part, at least one plate-like calcium
carbonate having an oil number greater than 50 g/100 g and a specific
surface area (BET) ranging from 10 m2/g to 30 m2/g.
REJECTIONS
The Examiner maintains the following rejections in the Examiner’s
Answer entered September 21, 2018 (“Ans.”):
I. Claims 1–7, 10, 12, 14, 18, and 21 under 35 U.S.C. § 103(a) as
unpatentable over DeLucia3 in view of Schaefer4, Nakajima5, and
Podschus6, as evidenced by SILQUEST MSDS7, Engineering Toolbox8, and
Bearce9;
II. Claims 8, 19, and 20 under 35 U.S.C. § 103(a) as unpatentable
over DeLucia in view of Schaefer, Nakajima, Podschus, and Damiano10, as
evidenced by SILQUEST MSDS, Engineering Toolbox, and Bearce; and

3 US 2007/0141941, published June 21, 2007.
4 EP 1 151 966 A1, published November 7, 2001.
5 US 5,292,495, issued March 8, 1994.
6 US 3,133,824, issued May 19, 1964.
7 SILQUEST PA-1 MSDS (SILQUEST MSDS.
8 Absolute, Dynamic and Kinematic Viscosity, The Engineering ToolBox,
www.EngineeringToolBox.com/dynamic-absolute-kinematic-viscosity-
d_412.html (2006).
9 Density and Thermal Expansion of Linseed Oil and Turpentine, 9
Technologic Papers of the Standards, Washington Government Printing
Office 4–27 (1912).
10EP 0 386 868, published September 12, 1990.
Appeal 2019-001060
Application 13/811,663

4
III. Claim 13 under 35 U.S.C. § 103(a) as unpatentable over
DeLucia in view of Schaefer, Nakajima, Podschus, and Dalziel11, as
evidenced by SILQUEST MSDS, Engineering Toolbox, and Bearce.
FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we reverse the Examiner’s rejections of
claims 1–8, 10, 12–14, and 18–21 under 35 U.S.C. § 103(a), for the reasons
set forth in the Appeal and Reply Briefs, and below.
As set forth above, independent claims 1, 14, and 21 each require the
recited dry liquid to include at least one calcium carbonate having an oil
number greater than 50 g/100 g, and a specific surface area (BET) ranging
from 5 to 20 m2/g, or from 10 to 30 m2/g.
The Examiner finds that DeLucia discloses a dry liquid concentrate
comprising calcium carbonate filler particles, but does not disclose that the
calcium carbonate particles have a specific surface area (BET) ranging from
5 to 20 m2/g, or from 10 to 30 m2/g. Final Act. 4–5 (citing DeLucia ¶¶ 19,
20). The Examiner finds, however, that Schaefer discloses a quick process
for producing consistent calcium carbonate particles useful in the plastics
industry that have a specific surface area of 13 m2/g, determined by BET.
Final Act. 6 (citing Schaefer ¶¶ 1, 22, 28).
The Examiner finds that DeLucia also does not disclose the oil
number of the calcium carbonate filler particles described in the reference,
but finds that Podschus discloses extremely fine and readily dispersible
calcium carbonate particles that are used as a filler material. Final Act. 5–7

11 US 2005/0233074 A1, published October 20, 2005.
Appeal 2019-001060
Application 13/811,663

5
(citing Podschus col. 1, ll. 11–15). The Examiner finds that Podschus
exemplifies calcium carbonate particles having an oil adsorption of 0.825
ml/g, which the Examiner determines corresponds to an oil number of 74.25
g/100 g calcium carbonate. Final Act. 6–7 (citing Podschus col. 4, ll. 16–
19).
In view of these disclosures in DeLucia, Schaefer, and Podschus, the
Examiner concludes that it would have been obvious to one of ordinary skill
in the art at the time of Appellant’s invention “to use a calcium carbonate
produced by the process of Schaefer in the dry liquid concentrate of
DeLucia, and to modify said calcium carbonate to have . . . an oil number of
74.25 g/100g as prescribed by Podschus,” because “the method of Schaefer
provides a consistent, quickly made calcium carbonate product that is useful
in the plastics industry,” and modifying the calcium carbonate to have an oil
number as disclosed in Podschus would “ensure that the calcium carbonate
is readily dispersible.” Final Act. 7.
The Examiner’s proposed combination of DeLucia, Schaefer, and
Podschus, however, is contrary to the intended purpose of DeLucia’s
invention, and to the disclosure of Podschus as a whole, for reasons
expressed by Appellant and discussed below.
DeLucia discloses that it was known in the art to incorporate liquid
additives into nonwoven webs formed of thermoplastic materials to improve
the performance of the webs, by first compounding the additives with a
thermoplastic material, and then melt extruding the mixture to form a web.
DeLucia ¶ 1. DeLucia discloses, however, that the extent to which liquid
additives may be loaded into thermoplastic compositions is often limited due
to the difficulty of compounding thermoplastic compositions at high liquid
Appeal 2019-001060
Application 13/811,663

6
additive levels. Id. DeLucia discloses that its invention addresses this
problem by providing filler particles into which high levels of liquid
additives can be loaded. DeLucia ¶¶ 2, 3, and 19. DeLucia refers to the
liquid additive-loaded filler particles as “dry liquid concentrates,” and
discloses that the dry liquid concentrates can be readily compounded with a
thermoplastic base composition, permitting a high level of the liquid additive
to be incorporated into a nonwoven web formed from the thermoplastic
composition including the dry liquid concentrate. DeLucia ¶¶ 3, 19.
DeLucia discloses that the dry liquid concentrate of DeLucia’s
invention includes liquid additives in an amount of from about 10 weight %
to about 80 weight % of the concentrate. DeLucia ¶ 3. DeLucia discloses
that suitable filler particles for forming the dry liquid concentrate include
calcium carbonate particles, and DeLucia indicates that the particles may
have a surface area of from about 50 m2/g to about 1000 m2/g, determined
by the physical gas adsorption (BET) method, and an average size of less
than about 500 micrometers. DeLucia ¶ 20. DeLucia explains that
“particles having such a small size and high surface area may have improved
loading capacity for the liquid additive.” Id.
Schaefer discloses finely divided, platelet-shaped calcium carbonate
particles, and Schaefer exemplifies a process for producing calcium
carbonate particles having a specific surface area of 13 m2/g, determined
with the BET method. Schaefer ¶¶ 8, 28.
In view of DeLucia’s disclosure that the high surface area of the
calcium carbonate filler particles used in DeLucia’s liquid concentrate may
improve the particles’ loading capacity for a liquid additive, one of ordinary
skill in the art reasonably would have expected that using the calcium
Appeal 2019-001060
Application 13/811,663

7
carbonate particles disclosed in Schaefer having a specific surface area of 13
m2/g as the filler particles in DeLucia’s dry liquid concentrate as proposed
by the Examiner would decrease the amount of liquid additive loaded into
the particles, relative to the amount of liquid additive loading achieved with
DeLucia’s filler particles, which have a specific surface area of from about
50 m2/g to about 1000 m2/g.
DeLucia’s experimental examples provide evidence substantiating this
expectation, as Appellant points out (App. Br. 17–18), by demonstrating that
calcium carbonate particles having a lower specific surface area exhibit
decreased liquid loading. Specifically, DeLucia’s experimental examples
describe preparing dry liquid concentrate samples 1 and 3 by mixing calcium
carbonate particles having a specific surface area of 3.2 m2/g with a SilQuest
PA-1 liquid additive, and discloses preparing sample 5 by mixing calcium
carbonate particles having a specific surface area of 150 m2/g with the
SilQuest PA-1 liquid additive. DeLucia ¶¶ 63–69, 73. DeLucia discloses
that in samples 1 and 3, the liquid additive constituted 7 % and 3.75 %,
respectively, of the dry liquid concentrate, which is outside the level of
liquid additive loading in the dry liquid concentrate of DeLucia’s
invention—from about 10 weight % to about 80 weight % (as discussed
above). DeLucia ¶ 73. In contrast, DeLucia discloses that in sample 5, the
liquid additive constituted 39 % of the dry liquid concentrate, which is
within the range of liquid additive loading in the dry liquid concentrate of
DeLucia’s invention. Id. DeLucia thus discloses that the liquid additive
loading that resulted from using calcium carbonate particles having a
specific surface area of 150 m2/g (39 %) was significantly greater than the
Appeal 2019-001060
Application 13/811,663

8
level of liquid loading that resulted from using calcium carbonate particles
having a specific surface area of 3.2 m2/g (7 % and 3.75 %).
In addition, as Appellant also points out (App. Br. 18), DeLucia
discloses preparing Masterbatch C by blending dry liquid concentrate
sample 1 (prepared with calcium carbonate particles having a surface area of
3.2 m2/g) with a polypropylene homopolymer thermoplastic resin, and melt
extruding the mixture. DeLucia ¶¶ 71, 80. DeLucia indicates that “[t]he
material had very little melt strength and was unable to be pelletized,” which
indicates that the material was unsuitable for forming a nonwoven web
according to DeLucia’s invention. DeLucia ¶ 80.
One of ordinary skill in the art reasonably would have understood
from these disclosures in DeLucia that using calcium carbonate filler
particles having a surface area below the range explicitly disclosed in
DeLucia as suitable for forming the dry liquid concentrate of DeLucia’s
invention would decrease the level of liquid loaded into the particles, as
Appellant argues. App. Br. 16–18. It follows that one of ordinary skill in
the art also would have understood that using the calcium carbonate particles
disclosed in Schaefer, which have a specific surface area of 13 m2/g, as filler
particles to form DeLucia’s dry liquid concentrate, would decrease the level
of liquid additive loaded into the particles, relative to the loading level
achieved using DeLucia’s calcium carbonate particles, which have a specific
surface area of from about 50 m2/g to about 1000 m2/g.
As Appellant argues (App. Br. 16–21), the Examiner’s proposed
modification of DeLucia’s dry liquid concentrate with Schaefer’s calcium
carbonate particles, therefore, would be contrary to DeLucia’s intended
purpose of providing filler particles into which high levels of liquid additives
Appeal 2019-001060
Application 13/811,663

9
can be loaded. Consequently, one of ordinary skill in the art would not have
been led to use Schaefer’s calcium carbonate particles as filler particles in
DeLucia’s dry liquid concentrate. In re Gordon, 733 F.2d 900, 902 (Fed.
Cir. 1984); see also In re Schulpen, 390 F.2d 1009, 1013 (CCPA 1968)
(explaining that an obviousness rejection cannot stand when the
modification proposed by the Examiner would run counter to the teaching of
a prior art reference).
Furthermore, Podschus discloses a process for producing finely
dispersed calcium carbonate particles used as a filler material to reinforce
rubber. Podschus col. 1, ll. 2–3, 11–15. Podschus describes embodiments
of the method that yield calcium carbonate particles having a specific
surface area of 40 to 50 m2/g, or of 70 to 100 m2/g, determined by BET.
Podschus col. 2, ll. 6–8, 51–56. Podschus exemplifies production of calcium
carbonate particles having a specific surface area of 53 m2/g and oil
adsorption of 0.825 ml/g (Example 2), and having a specific surface area of
73 m2/g and an oil adsorption of 0.79 ml/g. (Example 4). Podschus col. 4,
ll. 6–19, 33–47.
As discussed above, the Examiner proposes using calcium carbonate
particles produced by the process disclosed in Schaefer for the filler particles
in DeLucia’s dry liquid concentrate, and proposes modifying the calcium
carbonate particles to have an oil number as disclosed in Podschus. The
Examiner does not explain, however, how one of ordinary skill in the art
could modify Schaefer’s calcium carbonate particles to change their oil
number without also affecting other physical properties of the calcium
carbonate particles, including their specific surface area, in view of the fact
that the oil adsorption and specific surface area of the calcium carbonate
Appeal 2019-001060
Application 13/811,663

10
particles disclosed in Podschus appear to reflect physical properties
characteristic of “finely dispersed” calcium carbonate particles.
Consequently, as Appellant argues (App. Br. 29), one of ordinary skill
in the art reasonably would have expected that modifying Schaefer’s
calcium carbonate particles to have the same oil number as the calcium
carbonate particles disclosed in Podschus would require physical changes to
Schaefer’s calcium carbonate particles that would also likely change their
specific surface area, such that the resulting particles would reasonably have
the same or similar specific surface area as Podschus’ calcium carbonate
particles, which is outside the specific surface area range recited in claims 1,
14, and 21.
The Examiner’s assertion that one of ordinary skill in the art would
have been led to modify the calcium carbonate particles disclosed in
Schaefer to have an oil number as disclosed in Podschus, while maintaining
the specific surface area of the particles to the level of Schaefer’s particles
(13 m2/g determined by BET), therefore, lacks rational underpinning. In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness”) (cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007)).
We, accordingly, do not sustain the Examiner’s rejection of
independent claims 1, 14, and 21, and rejections of claims 2–8, 10, 12–13,
and 18–20, which each depend from either claim 1, 14, or 21, under
35 U.S.C. § 103(a).

Appeal 2019-001060
Application 13/811,663

11

CONCLUSION

Claims
Rejected
Basis Affirmed Reversed
1–7, 10, 12, 14,
18, and 21
§ 103(a)
DeLucia, Schaefer,
Nakajima, Podschus
1–7, 10, 12,
14, 18, and 21
8, 19, and 20 § 103(a)
DeLucia, Schaefer,
Nakajima, Podschus,
Damiano
8, 19, and 20
13 § 103(a)
DeLucia, Schaefer,
Nakajima, Podschus,
Dalziel
13
Overall Outcome 1–8, 10, 12–
14, and 18–21

REVERSED