Ex Parte Gehlsen et al

Board of Patent Appeals and Interferences

Sep 24, 2010

10835865 (B.P.A.I. Sep. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte MARK D. GEHLSEN and
BRADLEY S. MOMCHILOVICH
________________

Appeal 2009-013113
Application 10/835,865
Technology Center 1700
________________

Before CHUNG K. PAK, TERRY J. OWENS, and
KAREN M. HASTINGS, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL1
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 2, 3, 6, 7, 10, 15, 17, 18, 20, 21, 24, 25, 28, 30, 32, 33, 35
and 37. Claims 1, 16, 34 and 36, which are all of the other pending claims,

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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Application 10/835,865

stand withdrawn from consideration by the Examiner. We have jurisdiction
under 35 U.S.C. § 6(b).
The Invention
The Appellants claim an article that is formed by extrusion and has a
homogeneous distribution of thermoplastic expandable polymeric
microspheres. Claims 28 and 30 are illustrative:
28. A foam article comprising:

an extruded polymer foam formed by polymerization of one or more
monomeric acrylic or methacrylic esters of non-tertiary alkyl alcohols, said
alkyl alcohols having from 1 to 20 carbon atoms; and

a homogeneous distribution of a plurality of thermoplastic expandable
polymeric microspheres within the extruded polymer foam, said plurality of
expandable polymeric microspheres comprising unexpanded expandable
polymeric microspheres, at least partially expanded expandable polymeric
microspheres, or both.

30. An article comprising:

an extruded adhesive layer; and

a homogeneous distribution of a plurality of thermoplastic expandable
polymeric microspheres throughout the extruded adhesive layer, said
plurality of thermoplastic expandable polymeric microspheres comprising
unexpanded expandable polymeric microspheres, at least partially expanded
expandable polymeric, microspheres, or both;

wherein the extruded adhesive layer comprises a polymer matrix
comprising a blend of two or more polymers substantially free of urethane
crosslinks and urea crosslinks to eliminate the need for isocyanates in said
polymer matrix, wherein

at least one of said polymers in said blend comprises a pressure
sensitive adhesive polymer formed by polymerization of monomers
comprising an acrylate, methacrylate, or combinations thereof;
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and at least one of said polymers is selected from unsaturated
thermoplastic elastomers, acrylate monomer-insoluble saturated
thermoplastic elastomers, acrylate-insoluble semicrystalline polymers,
acrylate-insoluble amorphous polymers having a solubility parameter
of less than 8 or greater than 11, elastomers containing ultraviolet radiation-
activatable groups, and pressure sensitive and hot melt adhesives prepared
from non-photopolymerizable monomers.

The References
References relied upon by the Examiner
Slovinsky 5,385,772 Jan. 31, 1995
Patnode 6,063,838 May 16, 2000
Miyazaki (as translated) JP 56-061467 May 26, 1981
Hideaki (as translated) JP 07-268287 Oct. 17, 1995
Reference relied upon by the Appellants
“Guide for Preparation of Patent Drawings” 27-31 (United States Patent and
Trademark Office, June 2002).

The Rejections
The claims stand rejected as follows: claims 2, 3, 6, 7, 10, 17, 20, 21,
25, 28 and 33 under 35 U.S.C. § 102(b) or, in the alternative, under
35 U.S.C. § 103 over Miyazaki; claims 15, 30, 32, 35 and 37 under
35 U.S.C. § 103 over Miyazaki in view of Patnode; claim 18 under
35 U.S.C. § 103 over Miyazaki in view of Slovinsky; and claim 24 under
35 U.S.C. § 103 over Miyazaki in view of Hideaki.
OPINION
We reverse the rejections.
Issue
Have the Appellants indicated reversible error in the Examiner’s
determination that Miyazaki discloses, or would have rendered prima facie
obvious, to one of ordinary skill in the art, an extruded polymer foam or
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extruded adhesive having a homogeneous distribution of thermoplastic
expandable polymeric microspheres?
Findings of Fact
Miyazaki discloses a thermally expansible adhesive containing
thermally expansible fine granules having a granular diameter of about 5-
50 µ and a volume expansion factor when foamed of about 20-150 (p. 2).2
The adhesive can be an emulsion adhesive, a paste adhesive, a pressure
sensitive adhesive or a thermohardening adhesive (p. 6). “[W]hen thermally
expansible fine granules are added to a fluidal thermohardening resin
adhesive component, and the prepared adhesive is injected in between
adhering surfaces and thermally hardened at the expansion temperature of
fine granules, the fine granular adhesive component well penetrates into all
the corners of the gaps of objects to be bonded, thereby assuring thorough
adhesion of objects to be bonded” (p. 7).
Analysis
The Examiner argues that the “extruded” claim limitation is not to be
given patentable weight because it is a process limitation which has not been
shown to produce a patentably distinct article (Ans. 4).
That argument is not well taken because, first, it is the Examiner who
has the initial burden of establishing a prima facie case of unpatentability by
providing evidence or reasoning which indicates a reasonable appearance
that the Appellants’ product and that of the prior art are identical or
substantially identical. The Appellants do not have the initial burden of
providing evidence or reasoning to the contrary. See In re Thorpe, 777 F.2d

2 We use the Examiner’s page numbering of the Miyazaki translation
wherein the cover page is page 0 (Ans. 3).
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695, 697 (Fed. Cir. 1985); In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
Second, “extruded” in “extruded polymer form” (claim 28) or “extruded
adhesive layer” (claim 30) is a claim limitation, and when claims are
interpreted all limitations must be given effect. See In re Angstadt, 537 F.2d
498, 501 (CCPA 1976) (“we must give effect to all claim limitations”).
The Examiner states that “the dots in [Miyazaki’s] Fig. 1 in the
adhesive layer are interpreted as representing the unexpanded microspheres,
and the dot pattern is interpreted as illustrating a homogeneous distribution
of the unexpanded microspheres throughout” (Ans. 4). The Appellants
argue, in reliance upon the United States Patent and Trademark Office Guide
for Preparation of Patent Drawings (p. 31), that the dots are merely used to
designate an adhesive and have no meaning with respect to the adhesive
composition (Br. 11). The Examiner responds that “there is no legal basis
whatsoever that the US drawing guidelines must be adopted to interpret a
Japanese patent application” (Ans. 9-10).
The Examiner has provided no evidence that Japanese drawing
guidelines indicate that the dots in Miyazaki’s Figure 1 represent a
homogeneous distribution of Miyazaki’s thermally expansible fine granules.
Nor has the Examiner provided any other evidence that Miyazaki’s Figure 1
indicates that the thermally expansible fine granules in Miyazaki’s adhesive
layer are homogeneously distributed. The Examiner’s mere speculation to
that effect is not sufficient for establishing a prima facie case of
unpatentability.
The Examiner argues that “since JP ‘467 [Miyazaki] teaches that the
fine granular adhesive component well penetrates into all the corners of the
gaps of objects to be bonded, it is interpreted as requiring the expandable
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microspheres being homogeneously distributed throughout the adhesive
mixture” (Ans. 4-5). The Appellants argue that the Examiner “has failed to
show how anything in JP ‘467 even suggests that expansion into the corners
would be promoted by, much less require such a uniform distribution”
(Br. 13).
The Examiner again has provided mere speculation. The Examiner
has not provided evidence that penetration of Miyazaki’s fine granular
adhesive into all corners of the gaps of objects to be bonded requires a
homogeneous distribution of the thermally expansible fine granules in the
adhesive.
The Examiner argues that Miyazaki’s injection is extrusion “because
injection step necessarily conveying or extruding [sic] the fluidal mixture
out of an orifice of a device containing the mixture” (Ans. 4). The
Appellants argue that “if the Patent Office intends to rely on a purported
inherent homogenous distribution of expandable microspheres in the
injected materials of JP ‘467, the burden is on the Patent Office to establish
this inherency” (Br. 15).
The Examiner’s argument is not persuasive because the Examiner has
provided only speculation, not evidence, that because Miyazaki’s injected
adhesive comes out of an orifice it is the same or substantially the same as
an extruded adhesive.
The Examiner points out that Miyazaki teaches that the adhesive is
useful for making laminated buffering packaging materials (p. 7), and the
Examiner argues that it would have been obvious to one of ordinary skill in
the art to distribute Miyazaki’s thermally expansible fine granules
homogeneously “to obtain a uniform cushioning performance of the
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packaging material” (Ans. 5). The Appellants argue that “the method by
which this compounded material is applied also contributes to the uniform
distribution of the materials” (Reply Br. 3).
The Appellants’ Specification states (Spec. 7:31 – 8:3):
[T]he present expanded foam (i.e., a foam containing microspheres
that have been at least partially expanded) can have a uniform size
distribution of the expanded microspheres from the surface to the
center of the foam. That is, there is no gradient of expanded
microsphere sizes from the surface to the center of the foam, e.g., like
that found in expanded foams which are made in a press or a mold.

Thus, the Appellants’ Specification indicates that the method of expanding
the foam can affect the expansion of the expandable microspheres. The
Examiner has not provided evidence or reasoning which shows that even if it
would have been obvious to one of ordinary skill in the art to initially
distribute Miyazaki’s thermally expansible fine granules homogeneously in
the adhesive, there is reason to believe that after the adhesive is injected the
granules would have a distribution which is the same or substantially the
same as that of an extruded foam.
Conclusion of Law
The Appellants have indicated reversible error in the Examiner’s
determination that Miyazaki discloses, or would have rendered prima facie
obvious, to one of ordinary skill in the art, an extruded polymer foam or
extruded adhesive having a homogeneous distribution of thermoplastic
expandable polymeric microspheres.
DECISION/ORDER
The rejections of claims 2, 3, 6, 7, 10, 17, 20, 21, 25, 28 and 33 under
35 U.S.C. § 102(b) or, in the alternative, under 35 U.S.C. § 103 over
Miyazaki, claims 15, 30, 32, 35 and 37 under 35 U.S.C. § 103 over Miyazaki
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in view of Patnode, claim 18 under 35 U.S.C. § 103 over Miyazaki in view
of Slovinsky, and claim 24 under 35 U.S.C. § 103 over Miyazaki in view of
Hideaki are reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED

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