Appeal No. 2006-3224 Page 8
Application No. 10/063,656
required in claim 1 to form the polymeric microspheres. We note that Appellants in their
specification also disclose monomer polymerization in the presence of heat [0115], as
disclosed by Rembaum, but follow this process with aggregation [0117] and coalescing
[0118].
Appellants argue that neither Callegaro nor Grinstaff teach an emulsion/
aggregation process. Brief, page 15. Callegaro describes an emulsification, extraction,
and filtration process. Callegaro, column 5, lines 10-35; column 35, lines 1-10.
Grinstaff’s process involves acoustical emulsion. Grinstaff, column 10, lines 13-24.
The Examiner does not rely on these references for process steps, but instead argues
that they teach microsphere sizes within the claimed range. However, the Examiner
does not explain how Rembaum’s process would have been adapted the person of
ordinary skill in the art to produce “an average particle diameter of from about 1 to about
15 microns with a narrow particle geometric size distribution of less than about 1.25” as
claimed. Consequently, we do not see how Rembaum in combination with Callegaro
and Grinstaff teach the claimed method.
In regard to the claimed particle sizes, the Examiner states “difference in size of
the particles does not patentably distinguish the claimed microsphere having the recited
particle size over the microsphere of Rembaum in the absence of …unexpected/
unusual results.” Answer, page 9. The Examiner ignores that the claims are directed to
a method of producing particles having recited particle sizes and a geometric
distribution. To establish prima facie obviousness, it must be shown that the prior art
suggests the process which is claimed.
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