Ex Parte Mino

Board of Patent Appeals and Interferences

Mar 13, 2009

10363447 (B.P.A.I. Mar. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte YASUHIRO MINO
____________________

Appeal 2009-0229
Application 10/363,447
U.S. Patent Publication 2004/0033362
Technology Center 1700
____________________

Decided: 1 March 13, 2009
____________________

Before: FRED E. McKELVEY, Senior Administrative Patent Judge,
and SALLY GARDNER LANE and MICHAEL P. TIERNEY,
Administrative Patent Judges.

McKELVEY, Senior Administrative Patent Judge.

DECISION ON APPEAL

A. Statement of the case 1
In the Fiddler on the Roof, it came to pass that Tevye's oldest daughter 2
Tzeitel fell in love with Motel Kamzoil, a man who in Tevye's view was 3
"unsuitable" being nothing but a poor tailor. Lamenting the fact that Tevye 4

1 The two-month time period (37 C.F.R. § 1.304) for filing an appeal
(35 U.S.C. § 141) or commencing a civil action (35 U.S.C. § 145) begins to
run from the decided date shown on this page of the decision. The time
period does not run from the Mail Date (paper delivery) or Notification Date
(electronic delivery).

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wished "more" for his daughter, Tevye nevertheless analyzed the situation in 1
essentially the following words: 2
He's beginning to talk like a man. 3
On the other hand: What kind of match would that be … with a poor 4
tailor? 5
On the other hand, he is an honest, hard worker. 6
On the other hand, he has absolutely nothing. 7
On the other hand, things could never get worse for him. They could 8
only get better.2 9
10
As will become apparent, the case before us is an "on the other hand" 11
kind of case. 12
On the one hand, the Examiner at first blush seems to have a point. 13
On the other hand, 3M at first blush also seems to have a point. 14
On the other hand, the Examiner's finding that the prior art describes 15
embodiments which are free from expandable polymeric microspheres might 16
be questioned. 17
On the other hand, 3M position that the prior art only describes 18
embodiments having expandable polymeric microspheres also might be 19
questioned. 20
While the case initially seems to be a close case, at the end of the day 21
we hold that the Examiner's finding is not supported by substantial evidence. 22
We therefore reverse a prior art rejection. 23

2 Words are from Fiddler on the Roof, Metro Goldwyn Meyer DVD, ISBN
0 7982 3895 5, Scene 13 [The Pledge/Tradition] (1971).

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However, we affirm a § 112 rejection. 1
3M Company ("3M"), the real party in interest, seeks review under 2
35 U.S.C. § 134(a) of a final rejection (mailed 20 Dec. 2006). 3
Claim 20-22, 25-26 and 28-42 are in the application. 4
(1) Claims 20-22, 25-26 and 28-42 have been rejected under 35 5
U.S.C. § 102(b) over PCT International Publication WO 00/06637, 6
published 10 Feb. 2000 (Gehlsen). 7
(2) Claim 32 has been rejected under 35 U.S.C. § 112, second 8
paragraph, as indefinite. 9
Gehlsen is prior art under 35 U.S.C. § 102(b) if 3M is not entitled to 10
its claimed Japanese priority date, and under 35 U.S.C. § 102(a) if 3M is 11
entitled to that priority date. 12
3M has made no attempt to antedate Gehlsen. See 37 C.F.R. § 1.131. 13
We, like 3M, treat Gehlsen as prior art. 14
We have jurisdiction under 35 U.S.C. § 134(a). 15
16
B. Findings of fact 17
The following findings of fact are believed to be supported by a 18
preponderance of the evidence. To the extent that a finding of fact is a 19
conclusion of law, it may be treated as such. Additional findings appear in 20
the Discussion portion of the opinion. 21

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The invention 1
The invention is readily understandable from claim 20 on appeal, 2
which we reproduce from the Claims Appendix of the Appeal Brief 3
[bracketed matter and underscoring added]: 4
Claim 20. A method for producing a pressure sensitive 5
adhesive comprising: 6
(a) rolling into a sheet or extruding a mixture comprising 7
[1] a tacky acrylic polymer having a weight average molecular 8
weight of at least 100,000 g/mol, [2] a heat cross-linking agent, 9
and [3] a heat foaming agent that decomposes to generate a gas 10
upon heating, wherein the mixture is free of expandable, 11
polymeric microspheres, and 12
(b) heating the mixture to a temperature higher than the 13
activation temperatures of both the cross-linking agent and the 14
heat forming agent to cause foaming and cross-linking at 15
substantially the same time; 16
wherein the resulting cross-linked foamed pressure 17
sensitive adhesive has a restorative property. 18
Examiner's prior art rejection over Gehlsen 19
The Examiner rejected all the claims under 35 U.S.C. § 102(b) over 20
Gehlsen. 21
While agreeing with 3M that Gehlsen describes embodiments with 22
expandable, polymeric microspheres, the Examiner found that Gehlsen also 23
describes adhesives without expandable polymeric microspheres. 24

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For example, the Examiner notes that Gehlsen states that the polymer 1
foam "preferably includes a plurality of expandable polymeric 2
microspheres." Page 2:26-27 (emphasis added). 3
The Examiner further notes that Gehlsen that "articles are … then 4
exposed to heat energy … to activate … the expandable microspheres or 5
blowing agent." Page 3:15-18 (emphasis added by Examiner’s Answer). 6
Expandable microspheres and blowing agents were viewed by the Examiner 7
as alternative means for expanding foams described by Gehlsen. 8
Gehlsen states that "[u]pon activation, the foam expands due to the 9
expansion of the microspheres and/or blowing agent …." Page 3:22-23 10
(emphasis added). 11
Gehlsen also states "using expandable microspheres, blowing agents 12
or a combination thereof …" Page 4:6-7 (emphasis added). 13
"The polymer foam preferably includes a plurality of expandable 14
polymeric microspheres." Page 4:29-30 (emphasis added). 15
"Foam-in-place articles can also be prepared by incorporation 16
a chemical blowing agent … in the expandable extrudable compositions. 17
Page 19:6-8 (emphasis added). 18
The Examiner viewed the possible alternative embodiments described 19
by Gehlsen as consistent with the prior art use blowing agents or polymeric 20
expandable microspheres. Page 1:14-16. 21

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3M position 1
3M takes the position, and the Examiner does not disagree, that one 2
has to consider Gehlsen as a whole. 3
In the Summary of Invention, Gehlsen states "[t]he foam includes a 4
plurality of microspheres, at least one of which is an expandable polymeric 5
microspheres." Page 1:24-25. 6
All the examples include an expandable polymeric microsphere. See 7
Table 1 (pages 38-39), wherein the column labeled EMS (pph) [meaning 8
expandable microspheres in parts per hundred), no adhesive is described that 9
does not contain at least some expandable polymeric microspheres. 10
All the original claims call for the presence of an expandable 11
polymeric microsphere. See pages 51-54. 12
The issue 13
As 3M notes, "[e]ach of the independent claims provides a method for 14
producing a pressure sensitive adhesive from a mixture that is free of 15
expandable, polymeric microspheres." Appeal Brief, page 7. 16
3M goes on to state that "[t]he issue before the Board is simple—has 17
the Examiner established the Gehlsen identically shows such a mixture?" Id. 18
By "such a mixture" 3M means "a mixture that is free of expandable 19
polymeric microspheres." 20
3M says "no." The Examiner says "yes." 21
We commend, and thank, counsel for 3M for framing the issue to the 22
point narrowly. We also thank both counsel and the Examiner for clearly 23
presenting their respective views. The manner in which the issue and views 24
have been presented is a model for others to follow. 25

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Gehlsen 1
We elect to discuss Gehlsen in the Discussion portion of this opinion. 2
C. Discussion 3
Substantial evidence 4
Anticipation raises a question of fact. In re Berger, 279 F.3d 975, 980 5
(Fed. Cir. 2002); In re Baxter Travenol Lab., 952 F.2d 388, 390 (Fed. Cir. 6
1991). 7
What the prior art teaches is a question of fact. Graham v. John Deere 8
Co., 383 U.S. 1, 17 (1966); In re Trans Texas Holdings Corp., 498 F.3d 9
1290, 1300 (Fed. Cir. 2007); Rapoport v. Dement, 254 F.3d 1053, 1061 10
(Fed. Cir. 2001). 11
In this case, the anticipation issue turns on whether substantial 12
evidence supports the Examiner's finding that Gehlsen describes foams 13
which do not contain expandable polymeric microspheres. 14
"Substantial evidence" is such relevant evidence as a reasonable mind 15
might accept as adequate to support a conclusion. Consolidated Edison Co. 16
v. NLRB, 305 U.S. 197, (1938); Matsushita Elec. Indus. Co. v. United 17
States, 750 F.2d 927, 933 (Fed. Cir. 1984). 18
Substantial evidence is something less than the weight of the evidence 19
but more than a mere scintilla of evidence. Consolidated Edison Co., 305 20
U.S. at 216-17; In re Kotzab, 217 F.3d 1365, 1369 (Fed. Cir. 2000). 21
The possibility of drawing two inconsistent conclusions from the 22
evidence does not prevent a finding from being supported by substantial 23
evidence. Consolo v. Federal Maritime Comm'n, 383 U.S. 607, 619-20 24

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(1966); In re Translogic , Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007); In re 1
Kahn, 441 F.3d 977, 985 (Fed. Cir. 2006). 2
The scope and content of a prior art reference is not limited to the 3
disclosures in its specific illustrative examples. In re Chapman, 53 CCPA 4
978, 985, 357 F.2d 418, 424 (1966). All the disclosure of a reference must 5
be evaluated, including non-preferred embodiments, to determine the scope 6
and content of the reference. In re Mills, 470 F.2d 649, 651 (CCPA 1972). 7
See also In re Burckel, 592 F.2d 1175, 1179 (CCPA 1979). 8
Gehlsen 9
With the above legal principles in mind, we proceed to an analysis of 10
Gehlsen. 11
Gehlsen starts with an Abstract. According to the Abstract, the 12
application describes polymer foam articles having a plurality of 13
microspheres, at least one of which is an expandable polymeric microsphere. 14
By way of background, Gehlsen states that voids in foam can be 15
created inter alia through use of a blowing agent or expandable 16
microspheres. Page 1:14-17. The "voids" cause a reduction in the density. 17
In a "first aspect," the foam is said to include a "plurality of 18
microspheres, at least one of which is an expandable polymeric microsphere. 19
Page 1:24-25. The "first aspect" disclosure, particularly when considered in 20
light of page 10:17-18 (discussed infra), supports 3M's view that at least one 21
expandable polymeric microsphere has to be present. 22
Continuing along a similar theme, with respect to the "first aspect," 23
Gehlsen points out that the polymer foam preferably contains a plurality of 24
expandable polymeric microspheres. Page 2:26-27. On the one hand, the 25

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Examiner views the "preferably" as stating that the Gehlsen foams may or 1
may not contain expandable polymeric microspheres. On the other hand, 2
3M views the "preferably" as stating that Gehlsen prefers that more than one 3
expandable polymeric microsphere be present in the foam composition. 4
3M's position is consistent with the rest of the disclosure in Gehlsen. See, 5
e.g., page 10:17-18 discussed, infra. 6
According to Gehlsen, the foam may also include gas filled voids in 7
the polymer matrix. The voids typically can be formed by including a 8
blowing agent in the polymer matrix and then activating the blowing agent. 9
Page 3:4-7. 3M did not favor the USPTO with declaration testimony (37 10
C.F.R. § 1.132 (2008)) as to how one skilled in the art would read Gehlsen. 11
Cf. In re Alton, 76 F.3d 1168 (Fed. Cir. 1996), pointing out that declaration 12
testimony may be relevant on an issue of what is described in a 13
specification. Accordingly, we—like the Examiner—have been left to do 14
the best we can under the circumstances. At the end of the day, we find that 15
one skilled in the art would understand Gehlsen to say that both expandable 16
polymeric microspheres and a blowing agent may be present, but if you want 17
"gas-filled voids," you are going to have to have the blowing agent as well 18
as the expandable polymeric microspheres. If they work right, expandable 19
polymeric microspheres will not rupture and the only way to have gas-filled 20
voids is to include a blowing agent. 21
We next come to a discussion of activating the expandable 22
microspheres or blowing agent. Page 3:13-18. Basically, Gehlsen says that 23
a "foam-in-place" article is exposed to heat energy to activate, or further 24
activate, the expandable microspheres or blowing agent. The expandable 25

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polymeric microspheres expand (but do not rupture) at conditions different 1
from those which cause the blowing agent to function. See page 8:8 through 2
page 9:2: 3
It is also possible to prepare "foam-in-place articles by 4
controlling the process temperature during the initial form 5
preparation such that expansion of the microspheres is 6
minimized or suppressed. The article can then be placed at a 7
location of use or application … and heated, or exposed to 8
elevated temperature to cause microsphere expansion. "Foam-9
in-place" articles can also be prepared by including a blowing 10
agent in the expandable extrudable composition and conducting 11
the extrusion process under conditions insufficient to activate 12
the blowing agent. Subsequent to foam preparation, the 13
blowing agent can be activated to cause additional foaming. 14
15
On the one hand, the "microspheres or blowing agent" discussion 16
(page 17-18) superficially appears to be a discussion of an alternative 17
blowing agent embodiment. On the other hand, a penetrating analysis of 18
Gehlsen, as a whole, shows otherwise. 19
Gehlsen describes "using expandable microspheres, blowing agents or 20
a combination thereof" to describe a multiple layer articles where each layer 21
is being different "in the way it foams-in-place (e.g., using expandable 22
microspheres, blowing agents or a combination thereof). Page 4:3-7. 23
Examples of multiple layer articles are said to be shown in Figs. 4-6. 24

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1
Fig. 4 depicts a first multi-layer article 2
Fig. 4 shows an article 200 featuring a plurality of foam stripes 202 3
arranged in a pattern and combined with separate polymer layer 204. The 4
density of stripes 202 is different from the density of polymer layer 204 5
surrounding the stripes. 6
7
Fig 5. depicts a second multi-layer article 8
9
Fig. 5 is said to show another article 300 in which a plurality of foam 10
stripes 302 are arranged in a pattern and combined win a separate polymer 11
layer 304. Layer 304, in turn, is bonded to yet another polymer layer 306 on 12

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its opposite face. The density of stripes 302 is different from the density of 1
layer 304 surrounding the stripes. 2
3
Fig. 6 depicts a third multi-layer article 4
Fig. 6 shows yet another article 400 in which a plurality of foam 5
stripes 402 are embedded within a multilayer structure featuring polymer 6
layers 404, 406, and 408. The density of stripes 402 is different from the 7
density of layers 404, 406, and 408. 8
The Examiner has not relied on any particular foam "layer" to support 9
an anticipation finding. Further, a reading of Gehlsen, as a whole, tells one 10
skilled in the art that at least one layer contains expandable polymeric 11
microspheres. Still further, it is not clear that a layer without expandable 12
polymeric microspheres would otherwise anticipate other limitations in 3M's 13
claims. 14
Gehlsen describes a "second aspect" (page 4:13), a "third aspect" 15
(page 5:7), a "fourth aspect" (page 5:22) and a "fifth aspect" (page 6:1) of 16
the "invention." Each of these aspects includes "a plurality of microspheres, 17

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at least one of which is an expandable polymeric microsphere." Page 4:14-1
15, page 5:8-9, page 5:23-34 and page 6:2-3. 2
With respect to the "second aspect," Gehlsen repeats its disclosure that 3
the polymer foam preferably includes a plurality of expandable polymeric 4
microspheres. Page 4:29-30. We agree with 3M that what Gehlsen tells one 5
skilled in the art is that more than one expandable polymeric microsphere 6
may be present. Similar disclosure appears with respect to the "fifth aspect." 7
Page 6:18-19. 8
In the detailed description, Gehlsen repeats its teaching that the 9
invention features articles that include foam having a polymer matrix and 10
one or more expandable polymer microspheres. Page 10:13-14. At least 11
one of the microspheres—and preferably more—is still expandable. Page 12
10:17-18. 13
Gehlsen reveals that the amount of microspheres ranges from 0.1 parts 14
by weight to about 50 parts by weight. Page 14:24-26. The amount of 15
microspheres is consistent with Table 1 (pages 38-39) describing 16
experimental work, all of which was carried out using expandable polymeric 17
microspheres. See the column identified as EMS pph. 18
Gehlsen states that "[f]oam-in-place articles can also be prepared by 19
incorporating a chemical blowing agent … in the expandable extrudable 20
composition." Page 19:6-8. On the one hand, the Examiner views the "also" 21
as describing an alternative to the use of expandable polymeric 22
microspheres. On the other hand, however and consistent with the rest of 23
Gehlsen, 3M says the "also" would advise one skilled in the art that a 24

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blowing agent can be used in addition to the expandable polymeric 1
microspheres. We agree with 3M. 2
Lastly, and while not necessarily controlling, every independent claim 3
of Gehlsen (as published) calls for the presence of a plurality of 4
microspheres, at least one of which is an expandable polymeric microsphere. 5
Claim 1 (page 51); claim 16 (page 52); claim 23 (page 53); and claim 33 6
(page 54). 7
On the one hand, we can appreciate why the Examiner found that use 8
of a blowing agent might be an alternative embodiment. On the other hand, 9
we do not think that Gehlsen constitutes substantial evidence to support the 10
Examiner finding that Gehlsen describes foam embodiments made with a 11
blowing agent and not an expandable polymeric microsphere. Gehlsen does 12
not tell one skilled in the art to make any Gehlsen article without at least one 13
expandable polymeric microsphere. 14
The § 102 rejection is reversed. 15
Examiner’s § 112 rejection 16
Claim 32 was rejected under 35 U.S.C. § 112. 17
In the Appeal Brief, we find no discussion of the § 112 rejection. 18
The rejection was repeated in the Examiner's Answer. 19
No reply brief was filed. 20
Accordingly, 3M has failed to show that the Examiner erred in 21
rejecting claim 32 under § 112. 22
The rejection of claim 32 under § 112 is affirmed. 23

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D. Decision 1
3M has not sustained its burden on appeal of showing that the 2
Examiner erred in rejecting claim 32 as being indefinite within the meaning 3
of § 112. 4
3M has sustained its burden on appeal of showing that the Examiner 5
erred in rejecting the claims on appeal was being unpatentable under 35 6
U.S.C. § 102. 7
On the record before us, 3M is not entitled to a patent containing 8
claim 32. 9
Upon consideration of the appeal, and for the reasons given herein, 10
it is 11
ORDERED that the decision of the Examiner rejecting 12
claims 20-22, 25-26 and 28-42 as being anticipated under 35 U.S.C. § 102 13
over Gehlsen is reversed. 14
FURTHER ORDERED that the decision of the Examiner 15
rejecting claim 32 as being indefinite within the meaning of the second 16
paragraph of 35 U.S.C. § 112 is affirmed. 17
FURTHER ORDERED that no time period for taking any 18
subsequent action in connection with this appeal may be extended under 19
37 C.F.R. § 1.136(a)(1)(iv) (2008). 20

AFFIRMED-IN PART and REVERSED-IN-PART

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