11153789 (B.P.A.I. Sep. 24, 2010)

Ex Parte Yokoyama et al

Board of Patent Appeals and InterferencesSep 24, 2010

11153789 (B.P.A.I. Sep. 24, 2010)

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. 11/153,789 06/15/2005 Hiroshi Yokoyama 5576-181 9013 20792 7590 09/24/2010 MYERS BIGEL SIBLEY & SAJOVEC PO BOX 37428 RALEIGH, NC 27627 EXAMINER HAIDER, SAIRA BANO ART UNIT PAPER NUMBER 1796 MAIL DATE DELIVERY MODE 09/24/2010 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte HIROSHI YOKOYAMA, KOUJI KINOSHITA, TAKEHIKO FUKUMOTO, RYUICHI SAGUCHI, TATSUYA HOJO, TOSHIMI KOBAYASHI, and KINYA OGAWA ____________ Appeal 2009-013077 Application 11/153,789 Technology Center 1700 ____________ Before TERRY J. OWENS, BEVERLY A. FRANKLIN, and KAREN M. HASTINGS, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL1 Appellants appeal under 35 U.S.C. § 134 from the Examiner's rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). 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. Appeal 2009-013077 Application 11/153,789 2 STATEMENT OF THE CASE Claims 1, 11, and 14 are representative of the subject matter on appeal and are set forth below: 1. A microcapsule emulsion comprising: an emulsion particle formed in the presence of a biological active substance by emulsion polymerization of a total amount of 15 to 70 parts by weight of a first monofunctional alkyl (meth)acrylate ester and a first multifunctional (meth)acrylate ester per of 100 parts by weight of the biological active substance, and a coated layer on the emulsion particle, the layer being formed by emulsion polymerization of a total amount of 20 to 200 parts by weight of a second monofunctional alkyl (meth)acrylate ester and a second multifunctional (meth)acrylate ester per 100 parts by weight the biological active substance, wherein difference in carbon numbers between an alkyl group of the first monofunctional alkyl (meth)acrylate ester and an alkyl group of the second monofunctional alkyl (meth) acrylate ester is from 3 to 17. 11. A microcapsule emulsion comprising: an emulsion particle formed in the presence of a biological active substance by emulsion polymerization of a total amount of 15 to 43 parts by weight of a first monofunctional alkyl (meth)acrylate ester and a first multifunctional (meth) acrylate ester per of 100 parts by weight of the biological active substance, and a coated layer on the emulsion particle, the layer being formed by emulsion polymerization of a total amount of 20 to 100 parts by weight of a second monofunctional alkyl (meth)acrylate ester and a second multifunctional (meth)acrylate ester per 100 parts by weight the biological active substance, Appeal 2009-013077 Application 11/153,789 3 wherein the difference in carbon numbers between an alkyl group of the first monofunctional alkyl (meth)acrylate ester and an alkyl group of the second monofunctional alkyl (meth)acrylate ester is from 3 to 17. 14. A method for producing a microcapsule emulsion comprising: a first step of forming an emulsion particle in the presence of a biological active substance by emulsion polymerization of a total amount of 15 to 43 parts by weight of a first monofunctional alkyl (meth)acrylate ester and a first multifunctional (meth)acrylate ester per 100 parts by weight of the biological active substance, and a second step of forming on the emulsion particle a coated layer by emulsion polymerization of a total amount of 20 to 200 parts by weight of a second monofunctional alkyl (meth)acrylate ester and a second multifunctional (meth)acrylate ester per 100 parts by weight the biological active substance, wherein the difference in carbon numbers between an alkyl group of the first monofunctional alkyl (meth)acrylate ester and an alkyl group of the second alkyl monofunctional (meth)acrylate ester is from 3 to 17. The prior art relied upon by the Examiner in rejecting the claims on appeal is: Tamura EP 1 230 855 A1 Aug. 14, 2002 THE REJECTION Claims 1-20 are rejected under 35 U.S.C. 103(a) as being obvious over Tamura. Appeal 2009-013077 Application 11/153,789 4 ANALYSIS We essentially adopt the Examiner’s findings pertinent to the issue raised by Appellants for this rejection. We therefore incorporate the Examiner’s position as set forth in the Answer. We add the following for emphasis only. We also select claims 1, 11, and 14 for consideration on appeal based upon Appellants’ arguments See 37 C.F.R. § 41.37(c)(1)(vii) (2009). Claim 1 We agree with the Examiner that Tamura suggests “a total amount of 15 to 70 parts by weight” and “a total amount of 20 to 200 parts by weight” as recited in claim 1. Ans. 5-6. Appellants desire a more limited reading of the reference and argue that the working examples of Tamura do not “reflect the entire range” as claimed. Br. 5. However, as pointed out by the Examiner, the teachings of Tamura are not limited to the examples, and we refer to the case law cited by the Examiner therein. Ans. 9. Also as pointed out by the Examiner, where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 263 (CCPA 1976); In re Woodruff; 919 F.2d 1575, 1578 (Fed. Cir. 1990). Appeal 2009-013077 Application 11/153,789 5 Claims 11 and 14 With respect to the claimed amount of from “15 to 43 parts by weight”, as recited in claims 11 and 14, it is the Examiner’s position that Tamura teaches that this amount is a result effective variable because Tamura discloses that the amount of polyfunctional monomers control the sustained releasability of the functional substance. Tamura teaches larger amounts result in a slower sustained releaseability and lesser amounts result in faster sustained releasability. Ans. 6-7. Because the above-mentioned facts support the Examiner’s statement that the amount of polyfunctional monomers is a result effective variable, we agree with the Examiner’s conclusion that the claimed range would have been obvious. In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“[D]iscovery of an optimum value of a result effective variable . . . is ordinarily within the skill of the art.”); see also In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”). Applicant can rebut a presumption of obviousness based on a claimed invention that falls within a prior art range by showing “(1) [t]hat the prior art taught away from the claimed invention, . . . or (2) that there are new and unexpected results relative to the prior art.” Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004). In the instant case, Appellants refer to their examples in the Specification and state that they show slower, and longer duration of, sustained releasability even though the amounts of microgel A and B do not Appeal 2009-013077 Application 11/153,789 6 exceed the amounts disclosed in Tamura’s working examples. Appellants argue this is an opposite effect and would not have been expected. Br. 9. Appellants elaborate similarly on pages 3-5 of their Reply Brief. The above-mentioned evidence falls short in that we agree with the Examiner that there are unfixed variables which make the comparison ineffective. Ans. 11-12. With regard to rebuttal evidence, the court stated in In re Dunn, 349 F.2d 433, 439 (CCPA 1965) "[t]he cause and effect sought to be proven is lost here in the welter of unfixed variables." In view of the above, we therefore affirm the rejection. DECISION The rejection 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)(v). AFFIRMED cam MYERS BIGEL SIBLEY & SAJOVEC P O BOX 37428 RALEIGH NC 27627