Ex Parte D

Board of Patent Appeals and Interferences

Jul 30, 2012

11271025 (B.P.A.I. Jul. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ANDREW S. D’SOUZA
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Appeal 2011-001971
Application 11/271,025
Technology Center 1700
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Before EDWARD C. KIMLIN, BEVERLY A. FRANKLIN, and
LINDA M. GAUDETTE, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1, 3-4, 6, 8-11, and
13-16. We have jurisdiction under 35 U.S.C. § 6(b).
Claim 1 is illustrative:
1. A filled resin composite comprising at least one polymeric resin and
glass bubbles wherein said bubbles have an average size D50 of 25
micrometers or less, an average size D90 of 50 micrometers or less, a 10
percent collapse strength of at least 15,000 PSI (103 Mpa), and a
density of at least 0.6 g/cc.
Appeal 2011-001971
Application 11/271,025

2
The Examiner relies upon the following references in the rejection of
the appealed claims (Ans. 3):
Brown 2007/0034311 A1 Feb. 15, 2007
Israelson 2007/0155858 A1 Jul. 05, 2007

“Innovative Solutions for Demanding Applications”, Brochure for 3MTM
Microspheres Selection Guide 1-3 (Jan. 2003) (hereafter “3M Brochure”).

Appellant’s claimed invention is directed to a filled resin composite
comprising glass bubbles having the recited average sizes and collapse
strength.
The appealed claims stand rejected under 35 U.S.C. § 102(e) and 35
U.S.C. § 103(a) over Brown. The appealed claims also stand rejected under
35 U.S.C. § 102(e) and 35 U.S.C. § 103(a) over Israelson.
We have thoroughly reviewed each of Appellant’s arguments for
patentability. However, we agree with the Examiner that the claimed subject
matter is unpatentable over the cited prior art. Accordingly, we will sustain
the Examiner’s rejections for the reasons set forth in the Answer, and we add
the following primarily for emphasis.
There is no dispute that both Brown and Israelson, like Appellant,
disclose a filled resin composite comprising glass bubbles. It is Appellant’s
position that the Scotchlite Brand S60/HS glass bubbles of the prior art do
not possess the claimed size distribution. Appellant points out that Brown
discloses a D50 of 30 microns or less and a D90 of 55 microns or less, rather
than the claimed D50 of 25 microns or less and D90 of 50 microns or less.
Appellant makes the same argument against the Israelson rejections.
We are not persuaded by Appellant’s arguments. The Examiner
correctly points out that the size range distributions for the prior art glass
Appeal 2011-001971
Application 11/271,025

3
bubbles totally encompass the claimed ranges, and we find that the prior art
size distributions are substantially identical to those of Appellant. Inasmuch
as the 3M Brochure evidences that the prior art glass bubbles have the same
properties as Appellant’s glass bubbles, e.g., crush strength, tensile modulus,
elongation at break, flex modulus and flex strength, we do not perceive any
patentable distinction between the glass bubble-filled composites within the
scope of the appealed claims and those composites fairly described by the
applied prior art.1
To the extent it can be argued that the substantial identity between the
claimed glass bubbles and those of the prior art is not tantamount to a prior
art description of the claimed bubbles within the meaning of § 102, we have
no doubt that the prior art establishes a prima facie case of obviousness for
the claimed subject matter. Appellant points to results shown in Table 3 of
the present application which indicate that the claimed glass bubbles provide
superior performance compared to the glass bubbles used by Brown and
Israelson. While Appellant characterizes the results as “surprising”,
Appellant has not established that the reported results would be considered
truly unexpected by one of ordinary skill in the art. In re Merck & Co., 800
F.2d 1091, 1099 (Fed. Cir. 1986); In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972). Appellant has not rebutted the Examiner’s finding that the particle
size distribution of glass bubbles is an art-recognized result-effective
variable and, therefore, the Specification results would be expected by one
of ordinary skill in the art. Also, Appellant has not demonstrated that the
reported results are commensurate in scope with the extensive breadth of the
claimed subject matter.

1 See 3M Brochure 2, Glass Bubbles General Purpose Series Table.
Appeal 2011-001971
Application 11/271,025

4
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner’s decision rejecting the appealed claims 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)(1)(iv).
AFFIRMED

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