Ex parte Morita et al.

Board of Patent Appeals and Interferences

Dec 17, 1998

07885419 (B.P.A.I. Dec. 17, 1998)

Application for patent filed May 19, 1992.1
1
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journal and (2) is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte YOSHITSUGU MORITA and ATSUSHI SAKUMA
__________
Appeal No. 95-4453
Application 07/885,4191
___________
ON BRIEF
___________
Before PAK, WARREN and WALTZ, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEA
Morita et al. (appellants) appeal from the examiner’s final rejection of claims 15 through 21 and
Appeal No. 95-4453
Application 07/885,419
Our reference to the Japanese Kokai patent applications is to their corresponding English2
translations of record.
2
23, which are all of the claims pending in the application.
For purposes of this appeal, we will limit our discussion to the broadest claim on appeal, claim
15, since appellants state at page 3 of the Brief that “[t]he pending claims stand or fall together as a
group.” See 37 CFR § 1.192(c)(5)(1993). Claim 15 is reproduced below:
15. A method of coating silicone rubber particles with metal oxide particles comprising the
steps of:
forming a water-based dispersion of silicone rubber particles;
adding to said dispersion a water-based metal oxide sol; and
removing the water from the above mixture by spray-drying.
The references of record relied upon by the examiner are :2
Willing 4,248,751 Feb. 3, 1981
Shimizu et al. (Shimizu) 4,911,974 Mar. 27, 1990
Oniwa et al (Oniwa), Japanese Kokai Patent Application 62-257939, “Method for Preparing Silicone
Elastomer Spherical Fine Powders,” Nov. 10, 1987.
Ikeda et al. (Ikeda), Japanese Kokai Patent Application 64-306471 (HEI 1[1989]-306471), “A
Method for Producing Silicone Resin Microparticle,” Dec. 11, 1989.
Appeal No. 95-4453
Application 07/885,419
In his statement of rejection, the examiner refers to, inter alia, Oniwa which is incorporated3
by reference in Ikeda. To avoid any confusion and piece meal appeal, we will presume that the
examiner is relying on both Oniwa and Ikeda, in addition to Willing and Shimizu.
3
Claims 15 through 21 and 23 stand rejected under 35 U.S.C. § 103 as unpatentable over the
combined teachings of Willing, Shimizu, Oniwa and Ikeda.3
We reverse.
The examiner’s Section 103 rejection is predicated on the ground that it would have been
obvious to one of ordinary skill in the art to employ the spray drying technique described in either
Oniwa or Ikeda in Willing’s evaporation step. See Answer, page 6. The examiner, however, has not
supplied any evidence or sound scientific reasoning to establish why one of ordinary skill in the art
would have been led to employ Oniwa’s or Ikeda’s spray drying technique for producing fine dry
powder in Willing’s evaporation step involving drying coated or impregnated substrates, such as latex
particle and colloidal silica coated papers. See Answer in its entirety. Significantly, there is no
evidence in the record that a spray drying technique for producing fine dry powder is
Appeal No. 95-4453
Application 07/885,419
Since the examiner has not established a prima facie case of obviousness, we need not4
determine the sufficiency of the comparative results submitted by appellants to rebut a prima facie
case of obviousness. In re Geiger, 815 F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir. 1987).
4
useful for drying the coating of the type described in Willing. Thus, we conclude that the
examiner has not carried his burden of establishing a prima facie case of obviousness. Accordingly,4
we reverse the examiner’s decision rejecting the appealed claims under 35 U.S.C. § 103.
REVERSED
CHUNG K. PAK )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES F. WARREN )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
THOMAS A. WALTZ )
Administrative Patent Judge )
Appeal No. 95-4453
Application 07/885,419
5
CKP/pgg
Dow Corning Corporation
Patent Department - mail 1232
Midland, MI 48686-0994