Ex Parte Qi et al

Patent Trial and Appeal Board

Jan 30, 2018

14003589 (P.T.A.B. Jan. 30, 2018)

United States Patent and Trademark Office
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.
14/003,589 09/06/2013 Gang Qi 67170US006 7860
32692 7590 02/01/2018
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
PATEL, RONAK C
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
02/01/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GANG QI, KENTON D. BUDD, MICHAEL J. STAIGER,
JEAN ANN TANGEMAN, and LARRY RAY VISSER1
Appeal 2017-004683
Application 14/003,589
Technology Center 1700
Before BEVERLY A. FRANKLIN, WHITNEY N. WILSON, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify the real party in interest as 3M Company and its
affiliate 3M Innovative Properties Company. (App. Br. 2).
Appeal 2017-004683
Application 14/003,589
Appellants request our review under 35 U.S.C. § 134 of the
Examiner’s decision rejecting claims 1, 4, 5, and 10. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants’ subject matter on appeal and is
set forth below:
1. Hollow microspheres comprising: at least 45 wt% of
recycled glass based on the total weight of a feed composition
from which the hollow microspheres are derived, wherein the
hollow microspheres have a true density of less than
1.25 g/cm3, strength at 20% volume reduction greater than 20
MPa and have a substantially single cell structure, further
wherein the hollow microspheres are produced from a feed
composition having less than 0.05 wt% of an added effective
blowing agent based on the total weight of the feed composition
from which the hollow microspheres are derived.
THE REJECTIONS
1. Claims 1, 4-5 and 10 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Datta et al. (US 2004/0081827; published Apr.
29, 2004) (“Datta”)) in view of Miller et al. (US 5,534,348; issued July 9,
1996) (“Miller”)).
2. Claim 5 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Datta and Miller, further in view of Block et al. (US
5,176,732; issued Jan. 5, 1993 (“Block”)) or Hendricks et al. (US
4,257,798; issued Mar. 24, 1981 (“Hendricks”)).
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Appeal 2017-004683
Application 14/003,589
ANALYSIS
To the extent that Appellants have presented substantive arguments
for the separate patentability of any individual claims on appeal, we will
address them separately consistent with 37 C.F.R. § 41.37(c) (l)(vii). We
select claim 1 as representative based upon Appellants’ arguments.
Upon consideration of the evidence and each of the respective
positions set forth in the record, we find that the preponderance of evidence
supports the Examiner’s findings and conclusion that the subject matter of
Appellants’ claims is unpatentable over the applied art. Accordingly, we
sustain each of the Examiner’s rejections on appeal for essentially the
reasons set forth in the Answer, and affirm, and add the following for
emphasis.
Rejections 1 and 2
We refer to the Examiner’s findings made on pages 1-3 of the
Answer, which we do not repeat herein, regarding the Examiner’s position
for Rejection 1. We have reviewed Appellants’ arguments presented on
pages 3-5 of the Appeal Brief. We are unpersuaded by the arguments
therein essentially for the reasons provided by the Examiner in the record.
Ans. 5-9. We agree with the Examiner that (contrary to Appellants’ stated
position that Datta teaches that use of the claimed amount of blowing agent
leads to solid glass microspheres) Datta is directed to more than one
embodiment. The Examiner refers to the Abstract of Datta, and [0051],
[0063], [0066], [0068], [0110], and [0121] of Datta, in this regard. Ans. 8-
9. No Reply Brief is of record disputing the Examiner’s stated response to
argument. We note that the teachings of the prior art are not limited to
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Appeal 2017-004683
Application 14/003,589
particular examples, but rather extends to all that is disclosed, and is good
for all that it would have fairly suggested to one of ordinary skill in the art at
the time of the invention. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804,
807 (Fed. Cir. 1989) (quoting In reLamberti, 545 F.2d 747, 750 (CCPA
1976) (“[T]he fact that a specific [embodiment] is taught to be preferred is
not controlling, since all disclosures of the prior art, including unpreferred
embodiments, must be considered.”); In re Fracalossi, 681 F.2d 792, 794
n.l (CCPA 1982) (A prior art reference's disclosure is not limited to its
examples.); In reBoe, 355 F.2d 961, 965 (CCPA 1966) (All of the
disclosures in a prior art reference “must be evaluated for what they fairly
teach one of ordinary skill in the art.”); See also In re Courtright, 377 F.2d
647, 651-52 (CCPA 1967) and In re Nehrenberg, 280 F.2d 161, 164 (CCPA
1960).
We are thus unpersuaded by Appellants’ arguments of record.
Accordingly, we affirm Rejection 1. Because Appellants rely upon the same
arguments for Rejection 2 as for Rejection 1 (Appeal Br. 4), we affirm
Rejection 2 also.
DECISION
Each rejection is affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
ORDER
AFFIRMED
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