Ex Parte Lanphere et al

Board of Patent Appeals and Interferences

Mar 1, 2011

10928452 (B.P.A.I. Mar. 1, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JANEL LANPHERE,
ERIN MCKENNA, and THOMAS V. CASEY II
__________

Appeal 2010-009599
Application 10/928,452
Technology Center 1600
__________

Before DONALD E. ADAMS, MELANIE L. McCOLLUM, and
STEPHEN WALSH, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL1
This is an appeal under 35 U.S.C. § 134 involving claims to a particle.
The Examiner has rejected the claims as obvious. We have jurisdiction
under 35 U.S.C. § 6(b). We reverse.

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 2010-009599
Application 10/928,452

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STATEMENT OF THE CASE
Claims 23-27, 29, 30, and 43-51 are pending and on appeal (App.
Br. 1). We will focus on claim 23, the only independent claim on appeal,
which reads as follows:
23. A particle having a particle radius (r) extending from a particle
center in at least one direction, the particle comprising:
a polymeric matrix; and
a ferromagnetic material contained within the polymeric matrix,
wherein:
the particle has an interior region extending from the particle
center to a radius of about r/3 with pores having a mean size of about
20 microns or more,
the particle has a surface region enclosing the interior region
with pores having a mean size of about one micron or less,
the particle further comprises a third region between the interior
region and the surface region, and
the third region extends to a radius of about 2r/3 and has pores
having a mean size of about 18 microns or less.
Claims 23-27, 29, 30, and 43-51 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Mangin (WO 01/66016 A1, Sep. 13, 2001) in view
of Boschetti (US 6,680,046 B1, Jan. 20, 2004), Verma et al.
(US 2005/0019558 A1, Jan. 27, 2005), and Goupil et al. (US 6,652,883 B2,
Nov. 25, 2003) (Ans. 3).
ISSUE
Has the Examiner set forth a prima facie case that Mangin discloses or
suggests a particle having the void distribution set forth in claim 23?
ANALYSIS
Claim 23 requires a particle having an interior region with pores
having a mean size of about 20 microns or more and a surface region with
pores having a mean size of about one micron or less, as well as a third
Appeal 2010-009599
Application 10/928,452

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region between the interior and surface regions having pores having a mean
size of about 18 microns or less. We agree with Appellants that Mangin
does not teach this distribution for the reasons set forth in the Appeal Brief
on page 4.
With regard to whether the distribution would have been obvious, the
Examiner finds:
In light of the figures 1A and 1B of Mangin, it would have been
obvious to one ordinarily skilled in the art that the particles of
Mangin will have various size voids throughout the particle
wherein the a.) interior region will have large voids, such as
those corresponding to the sizes 15-30, 30-50; b.) the surface
region will have small voids corresponding to the 0.01-1, 1-5
and c.) a third region having intermediate size voids
corresponding to the sizes 1-5, 15-30.
(Ans. 10.) We do not agree.
Even if Mangin is considered to teach voids in a single particle
ranging from 0.01 to 50 microns, we do not agree that Figures 1A and B
suggest having significantly smaller voids, on average, in a surface region as
compared to an interior region. On the contrary, we agree with Appellants
that “the pores shown in Fig. 1A[, which are] at the surface of Mangin’s
particles[,] have sizes similar to those shown in the various regions shown in
the cross-sectional view of Fig. 1B” (Reply Br. 2).
CONCLUSION
The Examiner has not set forth a prima facie case that Mangin
discloses or suggests a particle having the void distribution set forth in
claim 23. We therefore reverse the obviousness rejection.

REVERSED
Appeal 2010-009599
Application 10/928,452

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