Ex Parte Blume et al

Board of Patent Appeals and Interferences

Oct 15, 2007

10247330 (B.P.A.I. Oct. 15, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANKE BLUME,
STEFAN UHRLANDT,
RALF SCHMOLL,
DETLEF LUGINSLAND
and HERBERT THOMA
____________

Appeal 2007-1931
Application 10/247,330
Technology Center 1700
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Decided: October 15, 2007
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Before EDWARD C. KIMLIN, CHUNG K. PAK, and PETER F. KRATZ,
Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 17 and 17-22.
Claims 8-16 stand withdrawn from consideration. Claim 1 is illustrative:

Appeal 2007-1931
Application 10/247,330

1. A precipitated silica having a

BET surface area ranging from 255 to 600 m2/g

CTAB surface area ranging from 150 to 350 m2/g

wherein the BET/CTAB surface ratio is ≥ 1.7.

The Examiner relies upon the following references in the rejection of
the appealed claims:
Uhrlandt 6,180,076 B1 Jan. 30, 2001
Blume 6,268,424 B1 Jul. 31, 2001
Materne 6,306,949 B1 Oct. 23, 2001
Kirino 6,433,066 B2 Aug. 13, 2002

Appellants' claimed invention is directed to a precipitated silica
having a BET, CTAB, and BET/CTAB surface ratio within the recited
ranges.
Appealed claims 1-7 and 17-22 stand rejected under 35 U.S.C. § 112,
first paragraph, description requirement. Claims 1-7 and 17-21 stand
provisionally rejected under the judicially created doctrine of obviousness-
type double patenting over claims of U.S. application no. 11/058,293.
Claims 1-5, 7, 17-20, and 22 stand rejected unde4r 35 U.S.C. § 102(e) as
being anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as being
unpatentable over Kirino. Also, claims 1-7 and 17-22 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Kirino in view of Materne,
Blume or Uhrlandt.
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Appeal 2007-1931
Application 10/247,330

We have thoroughly reviewed each of Appellants' arguments for
patentability. However, we find that the Examiner's rejections are well-
founded and in accord with current patent jurisprudence. Accordingly, we
will sustain the Examiner's rejections for essentially those reasons expressed
in the Answer.
We consider first the Examiner's rejection under 35 U.S.C. § 112, first
paragraph, description requirement. It is the Examiner's position that the
claimed lower limit for the BET surface area, 255 m2/g, does not have
original descriptive support in the present Specification. Appellants, on the
other hand, maintain that because the claimed CTAB value of 150 m2/g and
minimum BET/CTAB value of 1.7 is clearly disclosed in the Specification, a
simple multiplication of the minimum ratio value and the minimum CTAB
value results in the claimed minimum BET value of 255 m2/g. Appellants
direct attention to the Table on page 3 of the Specification for the CTAB
value of 150 m2/g and page 2, line 12 of the Specification for the minimum
BET/CTAB value of 1.7.
The flaw in Appellants' reasoning is that the Table at page 3 of the
Specification does not designate the value of 150 for the CTAB as a
minimum value, and significantly, the CTAB of 150 is associated with a
BET of 400, not the claimed minimum value of 255. Also, the BET/CTAB
ratio associated with a CTAB value of 150 is 2.67 not the minimum value
claimed on 1.7. Also, Appellants' table includes other CTAB values well
below 150. Consequently, we agree with the Examiner that one of ordinary
skill in the art would not find that Appellants' original specification conveys
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Appeal 2007-1931
Application 10/247,330

the concept of a precipitated silica having a minimum CTAB surface area of
150 m2/g, a minimum BETA surface area of 255 m2/g and a minimum
BETA/CTAB surface area of 1.7. Indeed, although Appellants'
Specification states that the CTAB surface area has a maximum value of 350
m2/g, the Specification fails to describe a minimum value of 150.
We will also sustain that Examiner's rejection of claims 1-5, 7, 17-20,
and 22 over Kirino to the extent it is based upon § 103. As pointed out by
the Examiner and acknowledged by Appellants, Kirino discloses precipitated
silica having a CTAB surface area in the range of 130 - 210 m2/g and a
BET/CTAB ratio of 1.3 - 2.0. A calculation using the maximum values of
210 and 2.0 for the CTAB and BET/CTAB ratio, respectively, yields a BET
value of 420, which is directly within the claimed ranged. As acknowledged
by Appellants, the reference ranges for CTAB and BET/CTAB ratio overlap
the claimed ranges. Accordingly, although Kirino does not exemplify
precipitated silica having values for BET, CTAB and BET/CTAB surface
area ratio within the claimed ranges to support a rejection under § 102, we
agree with the Examiner that the overlapping ranges of Kirino establish a
strong prima facie case of obviousness for the claimed invention. In re
Malagaria, 499 F.2d 1297, 1303 (CCPA 1974).
The fact that the eleven examples of Kirino do not describe
precipitated silica having the three relevant values all within the claimed
ranges does not negate the obviousness of one of ordinary skill in the art
selecting values within the ranges disclosed by Kirino that fall within the
claimed ranges. Moreover, it is well settled that where patentability is
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Appeal 2007-1931
Application 10/247,330

predicated upon change in condition of a prior art composition, such as a
change in concentration or the like, such as surface area, the burden is on the
applicant to establish with objective evidence that the change is critical, i.e.,
it leads to a new, unexpected result. In re Woodruff, 919 F.2d 1575, 1578
(Fed. Cir. 1990); In re Aller, 220 F.2d 454, 456 (CCPA 1955). In the
present case, Appellants have proffered no objective evidence that colloidal
silica having values falling within the 3 claimed ranges produce unexpected
results, vis-à-vis precipitated silica exemplified and fairly described by
Kirino.
Concerning the Examiner's § 103 rejection of claims 1-7 and 17-22
over Kirino in view of Materne, Blume or Uhrlandt, Appellants have not
addressed, let alone refuted, the Examiner's rationale that it would have been
obvious for one of ordinary skill in the art to use the well known silane
coupling agents of Materne, Blume or Uhrlandt in the composition of Kirino
which includes silane coupling agents.
As a final point, we note that Appellants have not contested the
Examiner's provisional double patenting rejection.
In conclusion, based on the foregoing and the reasons set forth by the
Examiner, the Examiner's decision rejecting the appealed claims is affirmed.
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Appeal 2007-1931
Application 10/247,330

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(iv)(effective Sept.
13, 2004).
AFFIRMED

cam

OBLON, SPIVAK, MCCLELLAND,
MAIER & NEUSTADT, P.C.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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