Appeal No. 2000-0019
Application 08/977,451
limits to the claim (Examiner’s Answer, page 6, line 13), those limits have been
adequately established such that one of skill in the art is reasonably apprised of the
scope of the invention. The Appellants have admitted that “The Claimed Subject Matter
Specifically Excludes Microspheres Which Have Been Treated With a Polyolefin Chain
Degradation Agent” (Appeal Brief, Heading, Section 2, Page 8) (Emphasis in Original).
Any polyolefin chain degradation agent is excluded from the claimed subject matter and
a step of non-treatment need not be included. We therefore likewise reverse this
rejection.
§103 Rejection – Prima Facie Case
Claims 1-6 stand rejected under 35 U.S.C. §103(a) as being unpatentable over
Marzola taken with Coleman.
Marzola is said to have taught polyolefin compositions within claim 1 suitable for
coating metal articles, while Coleman is said to have taught adding hollow glass
microspheres to polyolefin insulating compositions to accurately control physical
properties. The Examiner thus concludes it would have been obvious to have added
hollow microspheres to the polyolefin composition of Marzola in the expectation of
affording control of physical properties (Examiner’s Answer, page 7, lines 5 – 14).
The Appellants challenge the prima facie case of obviousness, stating that there
is no motivation in the prior art to combine the cited references. Marzola, it is said,
taught the use of microspheres which have been preferably treated with polyolefin chain
degradation agent prior to contacting the microspheres with the olefin polymer (Appeal
Brief, page 11, lines 10-12). This preference is amplified, it is said, by the example
showing non-treated microspheres as being broken in substantial proportion during
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