Appeal 2007-3918
Application 10/203,926
the Appellants’ Specification (capable of forming the claimed void fraction
of the expanded microspheres). Compare Gehlsen, page 14, lines 22-26,
with Tables 1-6 at pages 5 and 8 through 10 of the Specification. The
amount of expandable polymeric microspheres and the type of resin
employed are based upon the desired properties of the foam product (see
Gehlsen 11:8-9 and 14:22-23). The microspheres are expanded to desired
sizes so that the resulting foam can expand to fit into a given space (Gehlsen
3:13-25 and 10:13-21). In other words, we find that Gehlsen not only
teaches the resin and expandable microspheres capable of forming the
claimed void fraction and diameter of the expanded microspheres, but also
teaches that such fraction and diameter are recognized result-effective
variables. Accordingly, we determine that it is well within the ambit of one
of ordinary skill in the art to determine workable or optimum void fraction
and diameter of the expanded microspheres, such as those claimed, for given
utilities. In re Peterson, 315 F.3d 1325, 1329, 65 USPQ2d 1379, 1382 (Fed.
Cir. 2003); In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA
1980).
Accordingly, based on the factual findings set forth in the Answer and
above, we determine that the preponderance of evidence weighs most
heavily in favor of obviousness of the subject matter defined by claims 1
through 3, 6, 8, 11, and 12 within the meaning of 35 U.S.C. § 103.3
3 It appears that the product recited in claim 14 is identical or substantially
identical to the one recited in rejected claim 1.
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