Appeal No. 2006-0483
Application 09/860,272
Appellants argue all of the grounds of rejection under § 102(b) and § 103(a) involving
Sekiya as a group (brief, page 9; reply brief, page 6). Appellants contend that Sekiya would
have disclosed core/shell particles without disclosing that “monomers having particular differing
Tg’s should be used” or that a film containing such particles, in which the shell material fuses
together would dissipate sound (id.). The examiner responds that Sekiya teaches preparing the
core/shell particles using the same polymerization process disclosed by appellants and the Tg of
the core and the shell would be different providing phase segregation therebetween (answer,
page 11). We agree with the examiner. We find that Sekiya would have taught a coating
composition comprising a copolymer latex comprising polymer particles with hard polymer
domains and soft polymer domains in a core/shell structure which would result in phase
segregation (e.g., abstract, col. 1, ll. 33-59, col. 2, l. 66, to col. 3, l. 53, and col. 5, ll. 26-47).
Indeed, the monomers employed by Sekiya (e.g., col. 3, l. 54, to col. 5, l. 15) are the same as
those employed by appellants (specification, e.g., pages 12-16), each having a different
associated Tg within the range specified in appealed claim 1, and are used in the same
polymerization processes as pointed out by the examiner. Thus, we find on this record that the
coating compositions as claimed and as disclosed by Sekiya are identical or substantially
identical, thus shifting the burden to appellants to patentably distinguish the claimed
compositions over those of the reference by effective argument or objective evidence even
though the grounds of rejection are under § 102(b) and § 103(a). See, e.g., Best, 562 F.2d at
1255-56, 195 USPQ at 433-34; Skoner, 517 F.2d at 950-51, 186 USPQ at 82-83.
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of obviousness found in the references as applied by the examiner with
appellants’ countervailing evidence of and argument for nonobviousness and conclude that the
claimed invention encompassed by appealed claims 1 through 4, 7 through 15, 18, 19, 25 and
27 through 31 would have been obvious as a matter of law under 35 U.S.C. § 103(a).
The examiner’s decision is affirmed-in-part.
Remand
We remand the application to the examiner for consideration of issues raised by the
record. 37 CFR § 41.50(a)(1) (2005); Manual of Patent Examining Procedure (MPEP) § 1211
(8th ed., Rev. 3, August 2005).
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