Ex parte Watanabe

Board of Patent Appeals and Interferences

Mar 26, 1998

08037301 (B.P.A.I. Mar. 26, 1998)

Application for patent filed March 26, 1993.1
1
Paper No. 18
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte MASAHIRO WATANABE
and NORIAKI HARA
______________
Appeal No. 95-3869
Application 08/037,3011
_______________
ON BRIEF
_______________
Before Ronald H. Smith, Kimlin and Metz, Administrative Patent
Judges.
Ronald H. Smith, Administrative Patent Judge.

DECISION ON APPEAL
September 18, 1997, we mailed a decision on this appeal in
which we held that appealed claims 1-5 would have been prima
facie obvious to one of ordinary skill in the art (Paper No. 16).
Appeal No. 95-3869
Application 08/037,301
2
We remanded the case to the examiner to determine whether or not
the objective evidence contained in the comparative examples is
sufficient to rebut the prima facie case of obviousness. On
October 14, 1997, the examiner issued a supplemental examiner's
answer (Paper No. 17) addressing the objective evidence contained
in the comparative examples. After carefully considering the
examiner's position with respect to the evidence relied on by
appellants, we have decided to reverse the rejection because we
find the evidence of unexpected advantages to be sufficient to
rebut the prima facie case of obviousness.
As pointed out by appellants in their brief, the process of
the appealed claims, which call for powder coating and heat
treating prior to fluorinating the polymer, results in unexpected
improvement in reducing agglomeration and increasing porosity
compared to the prior art process of solution or suspension
coating. In the comparative examples appellants present six
Examples (1-6) of powder coating according to the appealed claims
and two comparative examples using the prior art solution or
suspension coating process. The results set forth in Tables 1
and 2 show a substantial reduction in agglomeration for Examples
Appeal No. 95-3869
Application 08/037,301
3
1-6 as compared to the comparative examples as well as a
substantial increase in pore volume for Examples 1-6 as compared
to comparative examples.
The examiner makes three points in his analysis of the
comparative results. First, the examiner contends that "the
comparative examples do not specifically disclose the amount of
carbon black." We disagree. Example 1 sets forth the coating
procedure that starts with 30 g. of carbon black. All of the
following examples, including Examples 2-6 and comparative
Examples 1 and 2, indicate that the procedure of Example 1 was
followed with certain indicated exceptions. Thus, we believe
30 g. of carbon black are used in all of the examples including
the comparative examples, and that the application fairly
discloses that 30 g. of carbon black are used in comparative
examples 1 and 2.
Secondly, the examiner urges that the comparative examples
recite a heat treating temperature considerably higher than that
of the examples of the appellants' invention. Again, we disagree
with the examiner's position. Heat treating of the powdered
coating composition is a claimed feature of the appealed claims,
and the examples according to the claimed invention, i.e.,
Examples 1-6, include a heat treating of the powder coating
Appeal No. 95-3869
Application 08/037,301
4
composition. However, the prior art solution or suspension
coating process does not include a heat treatment of the coated
particles. Accordingly, comparative Example 1 does not contain a
heat treatment of the coated particle, contrary to the examiner's
contention. The heating in comparative Example 1 is not a heat
treating of the coated particle, but is a heating of the
dispersion of the polymer in hexane prior to the coating of the
carbon black particles.
Thirdly, the examiner urges that the claims are not limited
to specific heat treatment temperatures or amounts of carbon
black, and are therefore not commensurate in scope with the
results relied on. Again, we disagree with the examiner's
position. Examples 1-6 include a broad range of ratios of carbon
black to polymer and a variation of heat treatments. Moreover,
the unexpected improvement in agglomeration and pore volume is
obtained in all six examples. Accordingly, it is apparent that
the examiner has presented no basis for concluding that the
results are limited to a particular temperature or amount of
carbon black.
Appeal No. 95-3869
Application 08/037,301
5
The decision of the examiner is reversed.
REVERSED
Ronald H. Smith )
Administrative Patent Judge )
)
)
)
Edward C. Kimlin ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Andrew H. Metz )
Administrative Patent Judge )

Appeal No. 95-3869
Application 08/037,301
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Stefan J. Klauber
Klauber & Jackson
411 Hackensack Avenue
Hackensack, NJ 07601
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