11201253 (B.P.A.I. Jan. 20, 2012)

Ex Parte Rizkalla

Board of Patent Appeals and InterferencesJan 20, 2012

11201253 (B.P.A.I. Jan. 20, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/201,253 08/10/2005 Nabil Rizkalla 20507 (SD-219A) 5119 272 7590 01/20/2012 SCULLY, SCOTT, MURPHY & PRESSER, P.C. 400 GARDEN CITY PLAZA SUITE 300 GARDEN CITY, NY 11530 EXAMINER MCDONOUGH, JAMES E ART UNIT PAPER NUMBER 1731 MAIL DATE DELIVERY MODE 01/20/2012 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 NABIL RIZKALLA __________ Appeal 2011-002071 Application 11/201,253 Technology Center 1700 ____________ Before HUBERT C. LORIN, JEFFREY T. SMITH, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-002071 Application 11/201,253 2 Appellant appeals under 35 U.S.C. § 134 the final rejection of claims 1, 3, 6-11, and 35-40. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). Oral arguments were heard in this appeal on January 11, 2012. We REVERSE. Appellant’s invention is directed to a catalyst support precursor (Spec. 4, ll. 17-20). Claim 1 is illustrative: 1. A precursor for a catalyst support, the precursor comprising: (i) an alpha alumina and/or a transition alumina; (ii) a binder; and (iii) a solid blowing agent comprising thermoplastic shells encapsulating a hydrocarbon. Appellant appeals the following rejections: 1. Claims 1, 3, 6-9, 11, and 35 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Carman ‘743 (US 6,123,743 issued Sept. 26, 2000) in view of Petersen (US 5,585,119 issued Dec. 17, 1996) and Carman ‘509 (US 5,160,509 issued Nov. 3, 1992). 2. Claims 10 and 37 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Carman ‘743 in view of Petersen, Carman ‘509, and Duke (US 3,752,773 issued Aug. 14, 1973). 3. Claims 36 and 38 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Carman ‘743 in view of Petersen, Carman ‘509, and Rowenhorst (US Re 35,570 issued July 29, 1997). Appeal 2011-002071 Application 11/201,253 3 4. Claims 39 and 40 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Carman ‘743 in view of Petersen, Carman ‘509, and Duke and Rowenhorst. ISSUE Did the Examiner reversibly err by engaging in impermissible hindsight to combine the teachings of Petersen and Carman ‘743 and Carman ‘509 to arrive at the claimed invention? We decide this issue in the affirmative. FINDINGS OF FACT AND ANALYSES Appellant argues that the Examiner’s combination of Petersen’s microspheres with Carman ‘743’s abrasive ceramic material is based on hindsight (App. Br. 12). Appellant argues that Petersen does not teach that the microspheres are or function as blowing agents (id. at 11). We agree with Appellant. The Examiner finds that Carman ‘743 teaches using blowing agents in a ceramic composition but fails to teach the specific solid blowing agent made of microspheres filled with a hydrocarbon required by claim 1 (Ans. 4- 5). The Examiner relies on Petersen as teaching a blowing agent made of microspheres filled with hydrocarbon and the Examiner concludes that it would have been obvious to modify Carman ‘743’s teachings by using Petersen’s microsphere blowing agent with a reasonable expectation of success (id. at 5). Though the Examiner finds that Petersen teaches a blowing agent, the Examiner does not cite to any portion of the reference or provide any Appeal 2011-002071 Application 11/201,253 4 discussion of why Petersen should be understood as teaching a blowing agent. Petersen does not explicitly teach that the hydrocarbon filled microspheres are blowing agents. The Examiner explains in a conclusory manner that “one skilled it the art would recognize that these microsphere products containing blowing agents are themselves blowing agents” (id. at 10). However, there is no evidence or persuasive reasoning to substantiate the Examiner’s finding. The Examiner points to no portion of the Petersen reference that teaches using the expandable microspheres as a blowing agent. Accordingly, we determine that the combination of Petersen’s microspheres with Carman ‘743’s abrasive ceramic as a blowing agent is based on impermissible hindsight. For these reasons and on this record, we reverse the Examiner’s § 103 rejections. DECISION The Examiner’s decision is reversed. ORDER REVERSED bar