Appeal 2007-3918
Application 10/203,926
has demonstrated that the application disclosure, taken together with the
state of the prior art, would require undue experimentation to make foam
rubbers having the claimed volume fraction of the claimed expanded
microspheres. On this record, we answer this question in the negative.
As correctly pointed out by the Appellants at pages 12 and 13 of the
Brief, the Specification at page 6 describes that a delay action accelerator
and a retarder can assist the expansion of microspheres in a rubber during
vulcanization of the rubber. Noguchi relied upon by the Examiner at page 5
of the Answer also indicates that a retarder and a heating temperature
employed during vulcanization of the rubber can assist the expansion of
microspheres (Noguchi 6-7). Implicit in the description provided in the
Specification and/or Noguchi is that manipulation of the vulcanization
process affects the sizes of the microspheres in the rubber, i.e., the volume
fraction of the expanded microspheres in the rubber. More importantly,
however, we find that the Specification at page 5 expressly states that “[b]y
manipulating the vulcanisation process, void fractions of 35-60% can be
obtained.” The Examiner has not proffered any acceptable evidence or
reasoning to doubt the accuracy of this statement. In re Marzocchi, 439 F.2d
220, 223-24, 169 USPQ 367, 369-70 (CCPA 1971) (“it is incumbent upon
the Patent Office . . . to explain why it doubts the truth or accuracy of any
statement in a supporting disclosure and to back up assertions of its own
with acceptable evidence or reasoning which is inconsistent with the
contested statement”). Indeed, claims 1 and 6, which according to the
Examiner meet the enablement requirement of 35 U.S.C. § 112, first
paragraph, also state that the expansion of microspheres during heating and
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