Ex Parte Ackerman et al

Board of Patent Appeals and Interferences

Jan 30, 2007

10206496 (B.P.A.I. Jan. 30, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte JOHN F. ACKERMAN,
ANDREW J. SKOOG, MATTHEW B. BUCZEK,
and JANE ANN MURPHY
______________

Appeal 2006-2523
Application 10/206,496
Technology Center 1700
_______________

Decided: January 30, 2007
_______________

Before CHARLES F. WARREN, THOMAS A. WALTZ, and
CATHERINE Q. TIMM, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to this Board from the decision of the Primary
Examiner finally rejecting claims 1 through 20, all of the claims in the
Application. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a) (2005).
We affirm the decision of the Primary Examiner.
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Claim 1 illustrates Appellants’ invention of a method for the
polymerization of metallic precursors in solution to form contiguous metal
oxides films on substrate particles, and is representative of the claims on
appeal:
1. A method for the polymerization of metallic precursors in solution
to form dense contiguous metal oxide films on substrate particles comprising
the steps of:
providing a reaction solution comprising ethanol, phosphates, and
metallic precursors;
adding metal substrate particles that are suspended in the reaction
solution;
adding alcohols having three to seven carbon atoms to the reaction
solution to raise the boiling point of the solution above the boiling point of
ethanol, until the total alcohol content in the solution comprises up to about
75% of the reaction solution by weight;
increasing the temperature of the reaction solution to a temperature
below the boiling point of the reaction solution and above the boiling point
of ethanol;
adding water to the reaction solution, at a rate sufficient to initiate a
polymerization reaction to polymerize the metallic precursors on the
surfaces of the suspended metal substrate particles while avoiding the
formation of precipitates in the solution and of a gel, to deposit a contiguous
metal oxide layer on surfaces of the suspended substrate particles; and
continuing to add water at a constant rate while sustaining the
temperature of the reaction of the reaction solution at a temperature above
the boiling point of ethanol and below the boiling point of the reaction
solution to increase the polymerization rate of the reaction until the
polymerization of the metallic precursors is complete, thereby increasing the
rate at which metal oxide coating is deposited on the surfaces of the metal
particles.

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The references relied on by the Examiner with respect to the grounds
of rejection are:
Adachi US 6,194,069 B1 Feb. 27, 2001
Atarashi US 6,207,280 B1 Mar. 27, 2001

“BACKGROUND OF THE INVENTION,” Specification ([0002]-[0010])
(hereinafter Background of the Invention).
The Examiner rejected appealed claims 1 through 10, 13, and
15 through 20 under 35 U.S.C. § 103(a) as unpatentable over admitted prior
art in the Background of the Invention in view of Adachi (Answer 3-7); and
appealed claims 11, 12, and 14 under 35 U.S.C. § 103(a) as unpatentable
over admitted prior art in the Background of the Invention in view of
Adachi, further in view of Atarashi (Id. 7-8)
Appellants specifically argue independent claims 1, 6, 16, and 19 and
group dependent claims 13 and 15 with claim 6, dependent claims 17 and 18
with claim 16, and dependent claim 20 with claim 19 (Br., e.g., 17-23, 24,
26, 27, and 28). Appellants argue the limitations of dependent claims 2
and 7 with specificity (Br. 19 and 20). Appellants set forth the limitations of
dependent claims 3 through 5 and 8 through 10 but do not argue the
patentability of these limitations over the applied prior art with specificity
(Br. 19 and 20-21 ). In this respect, 37 C.F.R. § 41.37(c)(1)(vii) states in
pertinent part, “merely [pointing] out what a claim recites will not be
considered an argument for separate patentability of the claim.” Appellants
argue claims 11, 12, and 14 involved in the second ground of rejection as a
group (Br. 27-29). Thus, we decide this appeal based on appealed
independent claims 1, 6, 16, and 19 and dependent claims 2, 7, and 11 as
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argued by Appellants and representative of the grounds of rejection.
37 C.F.R. § 41.37(c)(1)(vii) (2005).
OPINION
In order to review the Examiner’s application of prior art to the
appealed claims, we first interpret claims 1, 2, 6, 7, 16, and 19 by giving the
terms thereof the broadest reasonable interpretation in their ordinary usage
in context as they would be understood by one of ordinary skill in the art, in
light of the written description in the Specification unless another meaning is
intended by Appellants as established therein, and without reading into the
claim any disclosed limitation or particular embodiment. See, e.g., In re Am.
Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827, 1830 (Fed.
Cir. 2004); In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664, 1666-67
(Fed. Cir. 2000); In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023,
1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d
1320, 1322 (Fed. Cir. 1989).
We determine representative claim 1 encompasses methods of
polymerizing any manner of metallic precursors in any manner of solution to
form contiguous films of any manner of metal oxides on any manner of
substrate particles. The methods comprise at least the steps of (1) providing
a reaction solution comprising at least any amount of ethanol, any amount of
any manner of phosphates, and any amount of any manner of metallic
precursors which can participate in the polymerization; (2) adding any
manner of metal substrate particles which can be suspended in solution;
(3) adding any amount of “alcohols,” that is, at least two “alcohols,” which
have three to seven carbon atoms, at least to the extent that “the boiling point
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of the solution” is raised to any point “above the boiling point of ethanol,”
with the upper limit that the total amount of ethanol and added “alcohols” in
the solution “comprises up to about 75% of the reaction solution by weight;”
(4) increasing the temperature to any point between the boiling point of the
solution and the boiling point of ethanol; (5) adding any amount of water to
initiate the polymerization of the metallic precursors to form a contiguous
metal on the surface of the suspended metal substrate particles without
forming a participate or a gel in solution at this point in the method; and (6)
further adding water at a constant rate and maintaining the temperature of
the reaction medium at any point between the boiling point of the solution
and the boiling point of ethanol which increases the polymerization rate
above the initial polymerization rate until the polymerization is complete.
Dependent claim 2 modifies the method of claim 1 by “including the
additional step of stirring the solution . . . to maintain the metal substrate
particles in suspension.”
We notice the boiling point of ethanol is recognized in the chemical
arts as about 78.5°C.1
The open-ended term “comprising” in transition and in the body of
claim 1 opens the claim to include methods having additional steps and
ingredients in addition to those specified, including, for example, organic
substrate particles and the presence of other alcohols in the solution,
consistent with the method characterized in the preamble and the dependent
claims. See generally, Exxon Chem. Pats., Inc. v. Lubrizol Corp., 64 F.3d

1 See Monograph 3806. Ethyl Alcohol. The Merck Index 641-42 (Twelfth
Ed., Whitehouse Station, NJ, Merck & Co., Inc., 1996).
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1553, 1555, 35 USPQ2d 1801, 1802 (Fed. Cir. 1995) (“The claimed
composition is defined as comprising - meaning containing at least - five
specific ingredients.”); In re Baxter, 656 F.2d 679, 686-87, 210 USPQ 795,
802-03 (CCPA 1981) (“As long as one of the monomers in the reaction is
propylene, any other monomer may be present, because the term ‘comprises’
permits the inclusion of other steps, elements, or materials.”).
Independent claim 6 specifies essentially the same steps as claim 1
with the differences the metallic precursor is a metal oxo-hydroxide, the
substrate particles are any manner of finely divided metal substrate particles
which are suspended in an initial reaction solution comprising at least any
manner of “alcohol,” and the “total alcohol content . . . comprises between
about 40% to about 90% of the reaction solution by volume.” Dependent
claim 7 modifies the method of claim 6 by specifying “the alcohol in the
initial reaction solution is selected from the group consisting of alcohols
having from 2 to 7 carbon atoms.”
Dependent claim 11 modifies the method of claim 6 by specifying that
“the step of adding metal substrate particles includes adding particles
selected from the group consisting of” specified metals, the surface
characteristics of which are not specified. The term “includes” further opens
the method of claim 6 to contain any amount of other metal particles in
addition to the members of the specified Markush group. See generally,
Baxter, 656 F.2d at 686-87, 210 USPQ at 802-03; see also In re Bertsch, 132
F.2d 1014, 1019, 56 USPQ 379, 384 (CCPA 1942) (“it is true that the word
‘comprising’ is usually in patent law held to be synonymous with the word
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‘including’”); cf. Ex parte Davis, 80 USPQ 448, 449 (Bd. App. 1948) (“the
word ‘comprising’ alone being synonymous with ‘including’”).
Independent claim 16 also specifies essentially the same steps as claim
1. The methods encompassed by this claim involves the polymerization of
silicon oxo-hydroxide as the metallic precursor on finely divided metal
substrate particles as stated in the preamble, but have an initial reaction
solution comprising 180 ml of tetraethyl orthosilicate, which is a silicon
alkoxide,2 used as the metallic precursor. No silicon oxo-hydroxide
is otherwise specified. Indeed, Appellants distinguish between “metal oxo-
hydroxides” and “[o]ther precursors [which] include metal salts and
alkoxides” (Specification [0003]; cf. [0019]). Thus, the oxo-
hydroxide would result from in situ partial hydrolysis of the alkoxide. The
initial reaction solution also comprises 200 ml tetraethyl phosphate in
ethanol, to which is added any amount of “n-propanol . . . to raise the boiling
point of the solution to about 86°C,” wherein the “total alcohol content . . .
comprises between about 40% to about 90% of the reaction solution by
volume.”
Independent claim 19 specifies essentially the same steps as claim 16,
except any amount of tetraethyl orthosilicate, tetraethyl phosphate, and

2 See, e.g., ethyl silicate, The Condensed Chemical Dictionary 443. This
compound also been named tetraethoxysilane. See, e.g., Barry Arkles,
“Silicon Compounds (Esters),” Kirk-Othmer Encyclopedia of Chemical
Technology, 22, 69-70 and 74 (4th ed., New York, John Wiley & Sons,
1997).
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ethanol can comprise the initial reaction solution to which is added any
amount of “n-butanol.”3
We have considered the positions advanced by the Examiner (Answer
3-4 and 9-114) and Appellants (Br., e.g., 7-8 and 17-19; Reply Br. 32-35 and
50-52) with respect to the language “adding water to the reaction solution, at
a rate sufficient to initiate a polymerization reaction . . . while avoiding the
formation of precipitates in the solution and of a gel” appearing in claims 1
and 6. This limitation also appears in substantially the same language in
claims 16 and 19.
We determined this limitation in representative claim 1 applies to the
step of adding water to initiate the polymerization reaction, and indeed, the
subsequent step of “continuing to add water at a constant rate” is not
governed by this limitation (see above pp. 4-5). We find no basis in the
claim language or in the written description in the Specification on which to
read this limitation into the last specified step in the claims.
In the Background of the Invention, Appellants describe “one form of
[the liquid phase polymerization (LPP)] process” as involving “metal

3 The “n-butanol” limitation was present in claim 19 as originally filed. In
summarizing claim 19, Appellants state that “n-butanol (4 carbon atoms)
(should be t-butanol),” citing “Specification at page 9, line 10” (Br. 10). It is
well settled that Appellants’ mere intent as to the scope of the claimed
invention does not so limit the scope of a claim which is otherwise definite
when construed in light of the specification as it would be interpreted by one
of ordinary skill in the art. In re Cormany, 476 F.2d 998, 1000-02, 177
USPQ 450, 451-53 (CCPA 1973).
4 We have not considered the United States Patents cited for the first time in
the prosecution in this case in the Answer at page 10. Indeed, there is clear
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substrate particles . . . suspended in an alcohol-based solution containing
metal oxo-hydroxides” wherein “[t]he temperature of the solution is
increased and water is added to the solution to catalyze the polymerization of
the metal oxo-hydroxides” to coat “the surface of the metal substrate
particles with metal oxide” (Specification [0002]). Appellants exemplify the
process “[w]hen solutions are used to coat the substrate” as including in “the
initial solution” such ingredients as “ethanol . . . as the primary solvent,
phosphates . . . and metal oxo-hydroxides” or “[o]ther precursors [which]
include metal salts and alkoxides” (Specification [0003]).
Appellants then state that
[t]o further elaborate on the preceding example, there are two
common types of sol-gel solutions that can be used to form
coated substrates, a gelatinous solution with a low [ethanol]
content, and a liquid solution with a higher [ethanol] content.
The nature of the solution, whether liquid or gelatinous is
determined by the [ethanol] content of the solution. A gelatinous
solution is created when the alcohol content is about 30% to
about 40% alcohol by volume. If the alcohol content of the
solution is greater than about 40% alcohol by volume, the
solution will be a homogeneous liquid. . . . .
The LPP solutions are most useful in coating small metal
substrates that are suspended in the solution, while the gelatinous
form of such solutions are useful for applying a continuous, low
density coating on larger substrates. The present invention is
based on a liquid phase polymerization solution that avoids
gelation by controlling the appropriated polymerization reaction.
Specification, [0004]-[0005] (emphasis supplied).

disclosure of the prior art processes in the Background of the Invention and
the patents have not been made of record.
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Appellants further state that in adding water to “a liquid [ethanol]-
based reaction solution,”
[i]f the water is added to the reaction solution too rapidly, the
metal oxide will begin to form more quickly. In this situation, the
metal oxide will begin to form a continuous network which will
cause [sic] liquid solution to become a gel or to precipitate pure
metal oxide particles without coating the particles. The result
will be undesirable suspended metallic particles in a continuous
gel or in solution.
Specification, [0006] (emphasis supplied).
In describing the disclosed method, Appellants state that
water is slowly and precisely metered to the reaction solution to
polymerize the metal oxo-hydroxide species at a rate that avoids
forming a gel . . . . This polymerization reaction initiated by the
addition of water, coupled with the surfactant properties of the
phosphates in the solution causes a dense contiguous metal oxide
coating to form on the surface of the metal substrates that are
suspended in the metal oxo-hydroxide solution, but without the
formation of a gel within the solution. If the rate of water
addition is too high, precipitates begin to form in the solution
and gelation occurs. . . .
Specification, [0016] (emphasis supplied). Similarly, claims 1 and 6 as
originally filed contain the language
adding water to the reaction solution, at a rate sufficient to
polymerize the metallic precursors while avoiding the formation
of a gel to deposit a contiguous metal oxide layer on surfaces of
the suspended substrate particles . . . .
Specification, pages 11 and 12 (emphasis supplied).
Based on this disclosure in the specification, we determine the claim
language “avoiding the formation of precipitates in the solution and of a gel”
is reasonably interpreted as specifying avoiding (1) the formation of a gel in
a sol-gel solution and (2) the formation of precipitates in solution leading to
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the formation of a gel in a sol-gel solution, and not to the physical state of
any intermediate formed on the surface of the suspended substrate particles
during formation of the metal oxide film. Thus, we agree with the
Examiner’s position (Answer 4:3-5). We point out with respect to
Appellants’ position that “[i]t is the applicants’ burden to precisely define
the invention, not the PTO’s. See 35 U.S.C. § 112 ¶ 2 [statute omitted].”
Morris, 127 F.3d at 1055-56, 44 USPQ2d at 1029.
We have carefully reviewed the record on this appeal and based
thereon find ourselves in agreement with the supported position advanced by
the Examiner that, prima facie, the claimed method for the polymerization of
metallic precursors in solution to form contiguous metal oxides films on
substrate particles encompassed by appealed claims 1, 2, 6, 7, 16, and 19
would have been obvious over the combined teachings of the prior art
admitted in the Background of the Invention and Adachi to one of ordinary
skill in this art at the time the claimed invention was made. Accordingly,
since a prima facie case of obviousness has been established by the
Examiner, we again evaluate all of the evidence of obviousness and
nonobviousness based on the record as a whole, giving due consideration to
the weight of Appellants’ arguments in the Brief and Reply Brief. See
generally, In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed.
Cir. 1984).
The principal issue in this appeal is whether one of ordinary skill in
this art armed with the knowledge of methods for the polymerization of
metallic precursors in solution to form dense contiguous metal oxide films
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on substrate particles in the prior art as described in the Background of the
Invention, would have modified the prior art methods by suspending the
substrate particles in a solution containing ethanol or any other alcohol and
any amount of at least two alcohols having three to seven carbon atoms such
that the boiling point of the solution is any point above the boiling point of
ethanol in the reasonable expectation of obtaining the metal oxide films
(Answer 4:14-16). Contrary to Appellants’ position (see, e.g., Reply Br.
49:19-20 and 24), the admitted prior art in the Background of the Invention
in the specification is the primary prior art knowledge relied on by the
Examiner.5
The admitted prior art methods are described in the Background of the
Invention as using solutions containing any metal precursor, wherein the
solutions “may contain, for example, ethanol [having two carbon atoms] . . .
as the primary solvent” without limitation on the presence of other solvents
as ethanol is used in an exemplary manner. The Examiner relies on Adachi
to evince that in polymerizing titanium alkoxide as the metallic precursor to
form titanium oxide films on substrate particles, the solvent consists mainly
of alcohols having four to ten carbon atoms and can further contain less than
20 volume percent of alcohols having one to three carbon atoms, which
includes ethanol, citing col. 6, ll. 26-50; and that silicon alkoxide precursors
form metal oxide films using a solvent that can contain an alcohol having

5 See In re Nomiya, 509 F.2d 566, 570-71, 571 n.5, 184 USPQ 607, 611,
611 n.4 (CCPA 1975) (appellants’ representations in their application should
be accepted at face value as admissions that Figs. 1 and 2 may be considered
“prior art” under § 103, conceding what is to be considered as prior art in
determining obviousness of their improvement).
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one to three carbon atoms, which includes ethanol, citing col. 10, ll. 30-44
(Answer 5:5-9). The Examiner finds Adachi would have taught that the
alcohols used in the solvent are selected based on a hydrolysis rate which
forms the metal oxide on the substrate particles and not in solution, in which
respect the hydrolysis rate of titanium alkoxides is reduced in the disclosed
alcohol solutions, citing col. 5, ll. 3-57, and col. 6, ll. 38-50; and in contrast,
silicon alkoxides have a lower hydrolysis rate than titanium alkoxides and
thus, are used in a solvent of lower alcohols in such polymerization
processes, citing col. 6, ll. 30-44 (id. 5:9-21). The Examiner further finds
the hydrolysis rate of the metal precursor also increases with temperature as
described in the Background of the Invention (id. 6:1-2). The Examiner
determines one of ordinary skill in this art would have been led by Adachi to
select the alcohols, including mixtures thereof, in the solution and the
temperature of the polymerization to achieve an optimum hydrolysis rate
based on the metal alkoxide precursor employed (id. 6:2-8).
On this basis, the Examiner determines, prima facie, one of ordinary
skill in the art would have added other alcohols to the ethanol and other
alcohol containing solutions used in the prior art polymerization processes
described in the Background of the Invention as taught by Adachi and would
have increased the temperature at which that process is conducted in the
reasonable expectation that the metal oxide film is formed on the surface of
the substrate particles, not in solution, and at a higher rate (Answer 6:9-17).
The Examiner takes the position one of ordinary skill in the art following the
knowledge of the polymerization method in the prior art set forth in the
Background of the Invention and the teachings of Adachi would have
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routinely arrived at optimum or workable ranges for the carbon content of
the alcohols and polymerization temperatures (id. 6:18 to 7:2).
Appellants contend, with respect to independent claim 1, the prior art
processes described in the Background of the Invention are limited to the use
of a solution containing ethanol, phosphates, and metallic precursors
wherein water is added to the solution while maintaining the temperature
below the boiling point of ethanol (Br. 17:18-25). Appellants argue Adachi
does not provide the other limitations of the claimed method.
Appellants contend Adachi coats “metal oxide particles” by a sol-gel
process while the claimed method coats “metal particles” and precludes the
formation of a gel (Br. 17:28-18:5). Appellants contend col. 10, ll. 30-47, of
Adachi discloses methanol, ethanol, and propanol for using a silicon
alkoxide along with a “dispersion . . . accomplished by an ammonium salt to
prevent aggregation,” arguing that “applicants do not teach the use of
methanol or propanol as a low weight alcohol for dispersion of oxides,” or
the particular dispersion in describing the prior art methods in the
Background of the Invention (Br. 18:5-11). Appellants contend col. 5,
ll. 33-57, of Adachi, “teaches an alcohol-based solvent consisting mainly of
an intermediate alcohol having 4-10 carbon atoms” which precludes the
claimed “initial alcohol-based solvent of ethanol” to which is added
“intermediate alcohols from C3-C7 . . . to raise the boiling point of the
solution above ethanol” (Br. 18:12-20). Appellants point to the disclosure
“addition of intermediate alcohols above C7 will result in precipitation of a
hydrous mass” at [0022] in the Specification, and argue Adachi “permits the
use of alcohols having more than seven carbon atoms” (Br. 18:12-25).
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Appellants contend Adachi does not teach the limitation “the total alcohol
content as C3-C7 alcohol is added comprise up to 75%” (Br. 18:25-29).
Appellants finally contend Adachi adds “alkaline aqueous solutions . . . to
activate the particle surfaces” and not water to initiate the reaction, citing
col. 6, ll. 10-15 (Br. 18:29-19:3).
With respect to dependent claim 2, Appellants contend that at col. 13,
ll. 30-36, Adachi discloses “adding a solution of aqueous ammonia and
propanol dropwise while stirring to a solution of titanium tetrabutoxide and
n-butanol” which is not encompassed by claim 1 (Br. 19:4-11).
Appellants make essentially the same arguments with respect to
independent claims 6, 13, and 19 (Br. 20:4-13, 21:22-32, and 22:19-29).
With respect to independent claim 7, which specifies that the initial solution
includes alcohols having two to seven carbon atoms, Appellants contend the
prior art methods “only . . . use ethanol” as described in the Background of
the Invention, and “the initial reaction solution . . . includes metal oxo-
hydroxides and phosphates” which are not disclosed by Adachi (id.
20:14-18).
Appellants contend Adachi teaches away from the claimed invention
because the reference discloses depositing “titanium oxide coating from a
metallic precursor onto a metal oxide particle using a sol-gel method” (Br.
24:7-12). Appellants further contend even though “a chemical, titanium
alkoxide, is common” to the claimed processes and those disclosed by
Adachi, there is no “motivation to combine the prior art LPP processes with
the sol-gel process” of Adachi (Br. 26:8-18). Appellants still further contend
any prima facie case is rebutted by the disclosure in Specification
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“paragraph 22 that alcohols having eight carbon atoms or more when added
to the reaction solution produce precipitates,” thus establishing the criticality
of the claimed range (Br. 27:13-23).
In response, the Examiner maintains Adachi is a secondary reference
which shows the hydrolysis rate of the metal precursor in the alcohol solvent
controls whether a gel is formed in solution before coating the substrate
particles (Answer 11). The Examiner contends one of ordinary skill in the
art would have added alcohols of different carbon content for this purpose
which is sufficient to establish obviousness even though Appellants add the
alcohols for a different purpose (id. 11-12). The Examiner finds it was
known to slowly add water to catalyze the polymerization as described in the
Background of the Invention which would have suggested adding the water
at a constant rate as claimed (id. 12). With respect to Appellants’ contention
the disclosure of the formation of a precipitate in solution with an alcohol
having eight carbon atoms establishes the criticality of adding an alcohol
having a carbon content in the range of three to seven, the Examiner
contends the eight carbon atom alcohol, n-octanol, was added to a solution
which contained a silicon precursor (id. 13). The Examiner argues Adachi
discloses that titanium alkoxides are more reactive than silicon alkoxides,
requiring less reactive higher alcohols, such that the higher alcohols would
be critical for a silicon precursors but not for titanium precursors, which
does not establish criticality for a claimed method using “any metallic
precursors (Claim 1) including titanium precursors (Claim 4)” (id., original
emphasis deleted).
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Appellants reply that the claimed “LPP” process for coating metal
particles can not be equated to the “sol-gel” process for coating metal oxide
particles of Adachi (Reply Br. 49-50 and 52). In this respect, Appellants
maintain the use of alcohols having eight to ten carbon atoms as taught by
Adachi will result in a precipitate in solution as disclosed in the
Specification (id. 52).
We cannot agree with Appellants’ contentions with respect to the
description of prior art processes in the Background of the Invention. We
find this description makes clear the liquid phase polymerization (LPP)
processes involve “sol-gel” solutions in which the formation of a gel in
solution is controlled by the amount of alcohol in solution (Specification,
[0002]-[0004]; see above pp. 8-10). We further find an LPP process
involves suspension of any metal substrate particles in any “alcohol-based
solution” as exemplified by ethanol as “the primary solvent” or “primary
constituent” and not as the only alcohol used in such solution (Specification
[0003] and [0007]; see above pp. 8-9 and 13-14). The description further
shows the polymerization temperature depends on the boiling point of the
various constituents in the solution, such as ethanol where it is the “primary
constituent,” and the “polymerization reaction cannot be run at or above the
boiling point of the solution” (Specification [0007]). We find no limitation
on the type of metal substrate particles or the surface characteristic of such
particles which are coated with the metal oxide film by the prior art
processes.
We find Adachi would have disclosed to one of ordinary skill in this
art “sol-gel” methods for coating a metal oxide particle with a metal oxide
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film formed by polymerizing a metal precursor in an alcohol based solvent
(Adachi cols. 4-11). We agree with the Examiner’s findings of alcohol
solvents used with titanium alkoxides and silicon alkoxides in the teachings
of Adachi (see above pp. 12-13). We emphasize Adachi teaches the alcohols
are primarily selected from four to ten carbon alcohols, with a small amount
of one to three carbon alcohols, when a titanium alkoxide is employed, and
are selected from one to three carbon alcohols when a silicon alkoxide is
employed (Adachi, e.g., col. 5, l. 33, to col. 6, l. 30, and col. 9, l. 44, to col.
11, l. 18). The differences in the alcohols used in the methods is, as the
Examiner finds, explained by Adachi on the basis of hydrolysis rates of the
metal precursor employed in the alcohol solution (Adachi col. 5, ll. 35-49).
Adachi further adds an aqueous alkaline solution to the alcohol containing
solution to activate the surface of the metal oxide substrates (Adachi, e.g.,
col. 5, l. 58, to col. 6, l. 14, and col. 9, l. 49, to col. 10, l. 4).
Upon comparing the claimed methods encompassed by claims 1, 2, 6,
7, 16, and 19, as we interpreted them above, with the prior art methods
described in the Background of the Invention combined with the teachings
of Adachi, as we found above, we agree with the Examiner’s position.
Contrary to Appellants’ contentions, the claimed methods and the prior art
methods as described in the Background of the Invention and taught by
Adachi use sol-gel solutions. The claimed methods can coat substrate metal
particles which comprise a metal oxide to any extent, including on the
surface and entirely, and can use an aqueous alkaline solutions in this respect
as do the methods of Adachi. The prior art methods described in the
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Background of the Invention do not exclude such particles or the use of such
solutions in connection therewith.
Thus, we determine one of ordinary skill in the art would have been
led to combine the prior art methods described in the Background of the
Invention with the same kind of methods disclosed by Adachi, and Adachi
would not have taught away from the claimed invention.6 Indeed, there is
no dispute that titanium alkoxide metallic precursor of Adachi can be used in
the prior art methods described in the Background of the Invention. We
determine that one of ordinary skill would have routinely selected alcohols
from those disclosed by Adachi to be useful with this metallic precursor,
which includes primarily alcohols having four to ten carbon atoms along
with minor amounts of alcohols having one to three carbon atoms.
Indeed, we agree with the Examiner’s contention that one of ordinary
skill would have found in Adachi the teachings that these alcohols,
separately and severally, can provide a hydrolysis rate that will form an
oxide coating on the substrate particle and not in solution. Thus, we
determine that this person would have routinely selected primarily alcohols
with four, five, six, and/or seven alcohols and minor amounts of the other
alcohols from the disclosed ranges of alcohols for this purpose. Similarly,

6 See, e.g., In re Kahn, 441 F.3d 977, 985-89, 78 USPQ2d 1329, 1334-38
(Fed. Cir. 2006) (“A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant.” (quoting In re
Gurley, 27 F.3d 551, 553 [31 USPQ2d 1130, 1131], (Fed. Cir. 1994))); In re
Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1145-46 (Fed. Cir. 2004)
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Application 10/206,496
this person would have used one or more alcohols having one to three
carbon atoms for the same purpose where the metallic precursor is a silicon
alkoxide, a three carbon alcohol falling within the claimed range of alcohols.
See generally, Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807,
10 USPQ2d 1843, 1845-46 (Fed. Cir. 1989) (“That the ‘813 patent discloses
a multitude of effective combinations does not render any particular
formulation less obvious. This is especially true because the claimed
composition is used for the identical purpose.” (citations omitted)).
We further agree with the Examiner’s contentions that the combined
knowledge of the prior art methods described in the Background of the
Invention and the teachings of Adachi would have reasonably led one of
ordinary skill to use an amount of alcohol, a temperature rate and a rate of
addition of water which result in a workable or optimum hydrolysis rate for
the particular metallic precursor. See, e.g., In re Aller, 220 F.2d 454,
456-58, 105 USPQ 233, 235-37 (CCPA 1955) (not inventive to discover by
routine experimentation optimum or workable ranges for general conditions
disclosed in the prior art). We determine the major amount of alcohol in a
solution used with a titanium alkoxide precursor would be at least a four
carbon alcohol and thus the boiling point of the solution would be above the
boiling point of a solution where the alcohol is ethanol as the primary
constituent, that is, above the boiling point of ethanol. Similarly, where the
major amount of alcohol used with a silicon alkoxide precursor is the three

(prior art not teach away if the “disclosure does not criticize, discredit, or
otherwise discourage the solution claimed”).
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Appeal 2006-2523
Application 10/206,496
carbon alcohol, propanol, the boiling point of the solution would be above
that of ethanol.
We are not convinced by Appellants’ contentions that the claimed
methods are rendered non-obvious by the disclosure in the Specification that
the eight carbon alcohol, n-octanol, forms precipitates in solution. The
Examiner correctly points out that this disclosure is limited to the use of a
silicon alkoxide. Appellants have not demonstrated how this evidence
pertains to the teachings of Adachi where the metal precursor is a titanium
alkoxide and where a silicon alkoxide is used with alcohols up to three
carbon atoms. Indeed, appellants have the burden to submit an explanation
or evidence with respect to the practical significance of such results vis-à-vis
the teachings of the applied references and why the results would have been
considered unexpected, and have not carried that burden on this record. See
generally, In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1365-66
(Fed. Cir. 1997); In re Merck, 800 F.2d 1091, 1099, 231 USPQ 375,
381 (Fed. Cir. 1986); In re Longi, 759 F.2d 887, 897, 225 USPQ 645,
651-52 (Fed. Cir. 1985); In re Lindner, 457 F.2d 506, 508, 173 USPQ 356,
358 (CCPA 1972) (“This court has said . . . that mere lawyers’ arguments
unsupported by factual evidence are insufficient to establish unexpected
results.” (citations omitted)); In re Klosak, 455 F.2d 1077, 1080, 173 USPQ
14, 16 (CCPA 1972); In re D’Ancicco, 439 F.2d 1244, 1248, 169 USPQ
303, 306 (1971).
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined knowledge of methods known in the prior art described in the
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Appeal 2006-2523
Application 10/206,496
Background of the Invention and the teachings of Adachi with Appellants’
countervailing evidence of and argument for nonobviousness and conclude
that the claimed invention encompassed by appealed claims 1 through 10,
13, and 15 through 20 would have been obvious as a matter of law under
35 U.S.C. § 103(a).
Turning now to the rejection of claim 11 over the combined
knowledge of prior art methods in the Background of the Invention and the
teachings of Adachi and Atarashi, the Examiner contends that Atarashi
would have disclosed to one of ordinary skill in this art, spherical particles
of certain metals are coated by sol-gel methods, leading this person to use
the particles for substrate particles in the prior art processes (Answer 7-8).
Appellants contend that there is no suggestion of the benefit of combining
the teachings of the references and the Background of the Invention and the
combination would result in the formation of a gel in solution (Br. 28).
We find Adachi would have taught providing a metal oxide coating on
spherical metal oxide substrate particles, wherein the metal particles include
iron oxide and cobalt oxide (Adachi, e.g., col. 5, ll. 11-14). Atarashi would
have taught forming a metal oxide film by hydrolysis of a metal alkoxide,
including titanium alkoxides and silicon alkoxides, on inorganic substrate
particles, including iron and aluminum as well as alloys thereof (Atarashi,
.e.g., cols. 2-4).
We determine that one of ordinary skill in the art would have
combined the prior art polymerization coating methods described in the
Background of the Invention, Adachi and Atarashi and thus, would have
been led to use the coating methods with the metal substrates taught therein.
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Application 10/206,496
Therefore, this person would have used the prior art processes with the
metals specified in appealed claim 11.
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined knowledge of methods known in the prior art described in the
Background of the Invention and the teachings of Adachi and Atarashi with
Appellants’ countervailing evidence of and argument for nonobviousness
and conclude that the claimed invention encompassed by appealed claims
11, 12, and 14 would have been obvious as a matter of law under 35 U.S.C.
§ 103(a).
The Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2005).
AFFIRMED

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