Ex Parte Massa et al

Patent Trial and Appeal Board

Sep 25, 2013

11870651 (P.T.A.B. Sep. 25, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/870,651 10/11/2007 Dennis J. Massa 94086CFR 5316
1333 7590 09/26/2013
EASTMAN KODAK COMPANY
PATENT LEGAL STAFF
343 STATE STREET
ROCHESTER, NY 14650-2201
EXAMINER
SEIDLECK, JAMES J
ART UNIT PAPER NUMBER
1765
MAIL DATE DELIVERY MODE
09/26/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DENNIS J. MASSA, MRIDULA NAIR,
TAMARA K. JONES, and DALE E. HAMILTON
____________

Appeal 2012-009081
Application 11/870,651
Technology Center 1700
____________

Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
LINDA M. GAUDETTE, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 1-11. We have
jurisdiction under 35 U.S.C. § 6(b). Claim 1 is illustrative:
1. A core-shell polymer particle comprising a common binder
polymer for the core and the shell wherein the core has a porosity and the
shell is non-porous and the particle has a porosity of from 10 to 70 percent.

The Examiner relies upon the following references as evidence of
obviousness:
Takasaki et al. (Takasaki) 6,342,328 B1 Jan. 29, 2002
Appeal 2012-009081
Application 11/870,651

2
Takatsuna US 2006/0194133 A1 Aug. 31, 2006
Jin et al. (Jin) US 2007/0141501 A1 Jun. 21, 2007

Appellants' claimed invention is directed to a core-shell polymer
particle comprising a common binder polymer for the core and the shell.
Appealed claims 1-10 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Jin in view of Takasaki. Claim 11 stands rejected
under 35 U.S.C. § 103(a) as being unpatentable over Jin in view of Takasaki
and Takatsuna.
We have thoroughly reviewed the respective positions advanced by
Appellants and the Examiner. In so doing, we agree with the Appellants that
the Examiner's rejections are not well-founded.
The Examiner acknowledges that the prior art does not disclose a
core-shell polymer comprising the same binder polymer for the core and the
shell. It is the Examiner's position that the claim language "common binder"
does not require the claimed core and shell to comprise the same polymer,
but only polymers made from the same monomers, albeit in different
proportions and having different glass transition temperatures. Therefore,
the Examiner submits that the core and shell polymers of Takasaki, which
both include comonomers of styrene and alkyl(meth)acrylate, but have
different glass transition temperatures, meet the requirements of the claimed
common binder polymer for the core and the shell. The Examiner explains
that the comonomers of Takasaki are common to both the core and shell
polymers.
We do not subscribe to the Examiner's position. We agree with
Appellants that, when the claim language is read in light of the Specification
Appeal 2012-009081
Application 11/870,651

3
by one of ordinary skill in the art as it must be, it defines a binder polymer
for the core and the shell that is the same, or identical, polymer composition.
Appellants' Specification describes "the same polymer for the core and
shell" (page 6, lines 2-3).
Accordingly, while the Examiner sets forth a rationale for how, in a
different context, common polymers may not be identical, we concur with
Appellants that such an interpretation is not reasonable in the context of
Appellants' Specification and intent. We note that original claim 1 recites "a
common binder polymer for the core and the shell."
In conclusion, based on the foregoing, we are constrained to reverse
the Examiner's rejection.
REVERSED

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