Ex Parte White et al

Patent Trial and Appeal Board

Jun 27, 2013

11756280 (P.T.A.B. Jun. 27, 2013)

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.
11/756,280 05/31/2007 Scott R. White ILL02_014_US (TF06182) 1574
66140 7590 06/27/2013
BLANCHARD & ASSOCIATES
566 WEST ADAMS STREET
SUITE 600
CHICAGO, IL 60661
EXAMINER
POURBOHLOUL, SARIRA CAMILLA
ART UNIT PAPER NUMBER
1765
MAIL DATE DELIVERY MODE
06/27/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SCOTT R. WHITE,
NANCY R. SOTTOS, and BENJAMIN J. BLAISZIK
____________

Appeal 2012-004232
Application 11/756,280
Technology Center 1700
____________

Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and
KAREN M. HASTINGS, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-004232
Application 11/756,280

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Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 11, 13-16, 18, 21, 26, 31, 32, and 34-43. We have
jurisdiction under 35 U.S.C. § 6.
We AFFIRM.

Appellants claim a method of making capsules comprising sonicating
an emulsion comprising first and second polymerizers and polymerizing the
first polymerizer to form capsules encapsulating at least a portion of the
second polymerizer (independent claim 11). Appellants also claim a
composite material comprising a plurality of capsules in a polymer matrix
wherein the capsules have an average outer diameter less than 10 µm and the
average capsule wall thickness is from 20 nm to 90 nm (remaining
independent claim 21).
A copy of representative claims 11 and 21, taken from the Claims
Appendix of the Appeal Brief (App. Br.), is set forth below:
11. A method of making capsules, comprising:
sonicating an emulsion, to form a microemulsion,
the emulsion comprising water, a surfactant, a first
polymerizer, and a second polymerizer; and
polymerizing the first polymerizer, to form capsules
encapsulating at least a portion of the second polymerizer.
21. A composite material, comprising:
a polymer matrix,
a plurality of capsules in the polymer matrix,
a polymerizer, in the capsules, and
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Application 11/756,280

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an activator in the polymer matrix;
where the capsules comprise a capsule wall enclosing an
interior volume containing the polymerizer,
the capsules have an average outer diameter less than 10
micrometers where the standard deviation of the average outer
diameter is less than 60% of the average, and
the average capsule wall thickness is from 20 nm to 90
nm.
The § 112, 1st paragraph, Written Description Rejection

The Examiner rejects claims 21 and 31 under the 1st paragraph of
35 U.S.C. § 112 for failing to comply with the written description
requirement (Final Office Action (FOA) 2-3, Answer (Ans.) 4-5). The
Examiner considers this requirement to be violated by the recitation in the
rejected claims that "the average capsule wall thickness is from 20 nm to 90
nm" (Ans. 4-5).
Appellants argue that this claim recitation is inherently described in
the Specification and, as support for their argument, rely on the § 1.132
Blaiszik Declaration of record (as well as the Blaiszik publication discussed
in the Declaration) (App. Br. 26-27). Significantly, the Examiner's Answer
contains no response to Appellants' inherently-described argument. Based
on the record before us, we are persuaded by Appellants' argument and
evidence that the Specification original disclosure inherently describes the
claimed subject matter under consideration. See Kennecott Corp. v. Kyocera
Int’l Inc., 835 F.2d 1419, 1423 (Fed. Cir. 1987) (holding that the written
description requirement was satisfied by an inherent disclosure of the
claimed microstructure feature).
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Application 11/756,280

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It follows that we will not sustain the § 112, 1st paragraph, written
description rejection of claims 21 and 31.

The § 103 Rejection based on White, Farmer, and Lee

Under 35 U.S.C. § 103(a), the Examiner rejects claims 11, 13, 16, 18,
211, 32, and 34-43 as unpatentable over White (US 6,518,330 B2 issued Feb.
11, 2003) in view of Farmer (US 5,364,904 issued Nov. 15, 1994) and
further in view of Lee (US 2006/0281834 A1 published Dec. 14, 2006)
(FOA 3-6, Ans. 5-9). We need not reiterate the factual findings and
obviousness conclusions made by the Examiner in this rejection for reasons
which will become clear below.
Appellants argue that this rejection is improper because the Examiner
has failed to show that the teachings of White and Farmer can be combined
with a reasonable expectation of success (App. Br. 7-15). Absent from
Appellants' argument is any discussion of the reference to Lee. It follows
that the argument is not persuasive because it incompletely addresses the
prior art references relied upon by the Examiner in making the rejection.
Stated differently, Appellants argument that White and Farmer cannot be
combined with a reasonable expectation of success does not support a

1 By inadvertent oversight, the Examiner failed to include claim 21 in the
statement of this rejection. However, it is clear that the rejection includes
claim 21 because this claim is discussed in the body of the rejection (FOA 4,
Ans. 7) and because the statement of rejection includes claims 34-43 which
depend from claim 21. Moreover, this oversight is not harmful to
Appellants since their argument against the rejection is not directed to
specific claim features.
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Application 11/756,280

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determination that the Examiner's proposed combination of White, Farmer,
and Lee is improper.
We sustain the § 103 rejection based on White, Farmer, and Lee.

The § 103 Rejection based on White and Lee

The Examiner rejects claims 21, 26, 32, and 34 under 35 U.S.C.
§ 103(a) as unpatentable over White in view of Lee (FOA 7-8, Ans. 9-11).
Again, for reasons which will become clear, we need not reiterate the factual
findings and obviousness conclusions made in this rejection.
Appellants do not argue that the Examiner has failed to establish a
prima facie case of obviousness for the above rejection. Instead, Appellants'
sole argument is that the "[c]omposite materials according to claim 21 can
have improved mechanical properties that are surprising and unexpected in
view of the composites of White, alone or in combination with the capsules
of Lee" (App. Br. 16, see also id. at 17-22). The properties in question are
elastic modulus and fracture toughness (id. at 17-18). In an attempt to show
that these properties are unexpected, Appellants proffer results based on
composites said to represent claim 21 in comparison with composites said to
be "similar" to the composites of White, namely, composites disclosed in a
publication by Rzeszutko and composites disclosed in their Specification
(id.).
It is Appellants' burden to explain why their proffered results are
considered to be unexpected, are considered to be commensurate in scope
with the claimed subject matter, and are considered to be the consequence of
a comparison to the closest prior art. See, e.g., In re Klosak, 455 F.2d 1077,
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1080 (CCPA 1972). Furthermore, unexpected results must be established by
factual evidence, and a statement by an attorney that improved results are
surprising or unexpected is insufficient to establish unexpected results. See,
e.g., In re Geisler, 116 F.3d 1465, 1470-71 (Fed. Cir. 1997).
In the record of this appeal, the only statement which characterizes the
above results as "surprising and unexpected in view of the composites of
White, alone or in combination with the capsules of Lee" (App. Br. 16) is
made by Appellants' attorney in the Appeal Brief. Such an attorney
statement is insufficient to establish that the results are actually unexpected.
Additionally, Appellants have failed to provide this record with an
explanation of (1) why the comparative composites in the Rzeszutko
publication and the Specification are considered to be the closest prior art,
(2) why the results of this comparison are considered to be commensurate in
scope with the claimed subject matter, and (3) why the results are considered
to be unexpected by one with ordinary skill in the art.
For these reasons, Appellants have failed to carry their burden of
establishing that the composites defined by claim 21 yield unexpected
results. Accordingly, we sustain the § 103 rejection based on White and
Lee.

The § 103 Rejection based on White, Lee, Farmer, and Eichenauer

The Examiner rejects claims 14, 15, 31, 32, and 42 under 35 U.S.C.
§ 103(a) as unpatentable over White, Lee, Farmer, and Eichenauer
(US 5,225,465 issued July 6, 1993) (FOA 8-10, Ans. 11-13). Once again,
we need not reiterate the findings and conclusions made in this rejection.
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Application 11/756,280

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Appellants' argument against this rejection is similar to the argument
made against the above rejection based on White, Farmer, and Lee in that
Appellants fail to discuss the Lee reference in contending the subject
rejection lacks a reasonable expectation of success. In light of this failure,
Appellants' argument is not convincing for reasons detailed previously.
It follows that we also sustain the § 103 rejection based on White,
Lee, Farmer, and Eichenauer.

Conclusion

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 C.F.R. § 1.136(a)(1).

AFFIRMED
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