Ex Parte Chopra et al

Board of Patent Appeals and Interferences

May 13, 2005

10175587 (B.P.A.I. May. 13, 2005)

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The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte NAVEEN CHOPRA, PETER M. KAZMAIER, PAUL F. SMITH,
and PAUL J. GERROIR
__________
Appeal No. 2005-1087
Application No. 10/175,587
__________
ON BRIEF
__________
Before GARRIS, WARREN, and OWENS, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal which involves claims 11-16.
The subject matter on appeal relates to a composition
comprising a plurality of microcapsules each including a
polymerized micelle shell encapsulating a liquid droplet and a
particle component. This appealed subject matter is adequately
illustrated by independent claim 11 which reads as follows:
Appeal No. 2005-1087
Application No. 10/175,587
1On page 3 of the brief the appellants state that “[t]he claims
do not stand or fall together.” However, in the “ARGUMENT”
section of the brief, none of the here rejected claims have been
separately argued. It is well settled that, in order to obtain
separate consideration of commonly rejected claims, the claims
must be not only separately grouped but also separately argued.
See former regulation 37 CFR § 1.192(c)(7)(2003); compare current
regulation 37 CFR 41.37(c)(1)(vii)(September 2004). Also see In
re Dance, 160 F.3d 1339, 1340 n.2, 48 USPQ2d 1635, 1636 n.2 (Fed.
Cir. 1998) and Ex parte Schier, 21 USPQ2d 1016, 1018 (Bd. Pat.
App. & Int. 1991). Under these circumstances, our disposition of
the above noted rejections will be based on representative claim
11 which is the sole independent claim on appeal.
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11. A composition comprising: a plurality of
microcapsules each including a polymerized, optionally
hardened, micelle shell encapsulating a liquid droplet and a
particle component.
The following references are relied on by the examiner:
Chopra et al. (Chopra ‘870) 6,488,870 Dec. 3, 2002
Chopra et al. (Chopra ‘025) 6,492,025 Dec. 10, 2002
All of the appealed claims are rejected under 35 U.S.C.
§ 102(e) as being anticipated by either Chopra ‘870 or Chopra
‘025.1
We refer to the brief and to the answer for a complete
exposition of the opposing viewpoints expressed by the appellants
and by the examiner concerning these rejections.
OPINION
We will sustain each of these rejections.
Appeal No. 2005-1087
Application No. 10/175,587
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On the record before us, the appealed claim 11 description
of the here claimed shell as being a “micelle” shell is the one
and only claim feature urged by the appellants as distinguishing
from the respective compositions of the applied Chopra patents.
In this regard, it is the appellants’ position that “[t]he two
documents [i.e., Chopra ‘870 and Chopra ‘025] describe
microcapsules with a complex coacervation induced shell, but such
a shell is different from a micelle shell” (brief, page 3). With
further regard to this matter, the appellants point out that
their specification discloses a process for fabricating a micelle
shell which employs an amphiphile and that the applied Chopra
patents contain no disclosure of such a process involving an
amphiphile. The appellants’ position lacks persuasive merit.
The independent claim on appeal contains no limitations
relative to the manner in which the here claimed micelle shell
has been fabricated and thus is not limited to a micelle shell
fabricated via the process involving amphiphiles disclosed in the
subject specification. On the other hand, commonly accepted
definitions of the terms “coacervate” and “micelle” support the
Appeal No. 2005-1087
Application No. 10/175,587
2According to Webster’s II New Riverside University Dictionary
(1984): “coacervate” is defined as “a cluster of droplets
separated out of a lyophilic colloid,” and “micelle” is defined
as “a submicroscopic aggregation of molecules, as a droplet in a
colloidal system.”
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examiner’s viewpoint that the coacervation shell described in the
Chopra references and the micelle shell recited in appealed claim
11 are indistinguishable.2
Because the prior art coacervation shell and the here
claimed micelle shell appear to be indistinguishable, we consider
it appropriate to require that the appellants prove a distinction
actually exists between the here claimed and prior art shells.
This requirement is especially appropriate in this case due to
the fact that the Chopra patents and the subject application are
all assigned to the same real party of interest (i.e., Xerox
Corporation). The fairness of so allocating the burden of proof
is evidenced by the inability of the Patent and Trademark Office
to manufacture products or to obtain and compare prior art
products. See In re Best, 652 F.2d 1252, 1255, 195 USPQ 430,
433-34 (CCPA 1977).
Appeal No. 2005-1087
Application No. 10/175,587
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For the above stated reasons, we hereby sustain the
examiner’s Section 102 rejections of all appealed claims as being
anticipated by either Chopra ‘870 or Chopra ‘025.
The decision of the examiner is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a)(1)(iv)(effective September 13, 2004; 69 Fed. Reg.
49960 (August 12, 2004); 1286 Off. Gaz. Pat. and TM Office
21 (September 7, 2004)).
AFFIRMED

BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES F. WARREN ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
TERRY J. OWENS )
Administrative Patent Judge )
BRG/hh
Appeal No. 2005-1087
Application No. 10/175,587
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PATENT DOCUMENTATION CTR.
XEROX CORP.
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