Ex Parte Feeney et al

Board of Patent Appeals and Interferences

Jul 5, 2011

10741741 (B.P.A.I. Jul. 5, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/741,741 12/19/2003 Carrie A. Feeney IM-03-2 (NE) 5509
40256 7590 07/06/2011
FERRELLS, PLLC
P. O. BOX 312
CLIFTON, VA 20124-1706
EXAMINER
NERANGIS, VICKEY MARIE
ART UNIT PAPER NUMBER
1762
MAIL DATE DELIVERY MODE
07/06/2011 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte CARRIE A. FEENEY, HARRIS A. GOLDBERG,
MICHELE FARRELL, DOUGLAS P. KARIM, and KEISHA R. OREE
______________

Appeal 2009-014462
Application 10/741,741
Technology Center 1700
_______________

Before BRADLEY R. GARRIS, CHARLES F. WARREN, and
JEFFREY T. SMITH, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting claims 1-6, 8-13, 15-26, 28-33, and 34-54 in the
Office Action mailed August 20, 2008. 35 U.S.C. §§ 6 and 134(a) (2002);
37 C.F.R. § 41.31(a) (2008).
We reverse the decision of the Primary Examiner.
Claims 1 and 36 illustrate Appellants’ invention of a barrier coating
derived from an aqueous dispersion, and are representative of the claims on
appeal:
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Application 10/741,741
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1. A barrier coating derived from a stable aqueous dispersion where
said dispersion is in the form of an emulsion, suspension, colloidal
dispersion and/or latex, said dispersion including (i) a dispersed non-
elastomeric polymer selected from the group consisting of polyvinylidene
chlorides, polyesters, polyacrylics and polyurethanes, (ii) a dispersed
substantially exfoliated silicate filler material not functionalized with
organic cations, the silicate filler having an aspect ratio greater than 25
wherein said substantially exfoliated silicate filler is treated with an acid or
base prior to being combined with the non-elastomeric polymer, and wherein
% of the silicate filler is less than 60% of the solid content based on weight,
and (iii) at least one additive, selected from the group consisting of
surfactants, emulsifiers, anti-foaming agents, dispersing agents, wetting
agents, leveling agents and thickeners wherein the coating exhibits an at
least 5-fold reduction in gas permeability than a coating formed of said non-
elastomeric polymer alone.
36. A barrier coating derived from a stable aqueous dispersion where
said dispersion is in the form of an emulsion, suspension, colloidal
dispersion and/or latex, said dispersion including (i) a dispersed non-
elastomeric polymer selected from the group consisting of polyvinylidene
chlorides, polyesters, polyacrylics and polyurethanes, (ii) a dispersed
substantially exfoliated silicate filler material not functionalized with
organic cations, the silicate filler having an aspect ratio greater than 25
wherein said substantially exfoliated silicate filler is treated with an acid or
base prior to being combined with the non-elastomeric polymer, and wherein
% of the silicate filler is less than 60% of the solid content based on weight,
and (iii) at least one additive, selected from the group consisting of
surfactants, emulsifiers, anti-foaming agents, dispersing agents, wetting
agents, leveling agents and thickeners wherein the coating exhibits an at
least 2-fold reduction in gas permeability as compared with a like coating
formed with untreated filler.
Appellants request review of the grounds of rejection advanced on
appeal by the Examiner: claims 36-44 under 35 U.S.C. § 112, first
paragraph, written description requirement; and under 35 U.S.C. § 103(a),
claims 1-6, 8, 9, 12, 13, 16-22, 25, 26, 29-33, and 35-44 over Feeney (WO
98/56861 A1); claims 1-6, 8, 9, 12, 13, 15-22, 25, 26, 28-32, and 35-44 over
Appeal 2009-014462
Application 10/741,741
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Feeney in view of Cruz (US 4,515,633); and, claims 10, 11, 23, and 24 over
either Feeney or Feeney in view of Cruz, further in view of Tachika (US
5,356,989). App. Br. 13; Ans. 3, 5, 7, and 8.
Opinion
I. § 112, first paragraph, written description requirement: Claims 36-38
A.
The Examiner contends that the limitation “wherein the coating
exhibits an at least 2-fold reduction in gas permeability as compared with
a like coating formed with untreated filler” in representative product claim
36 (emphasis supplied), and the at least 5-fold and 10-fold reduction
limitations in representative claims 37 and 38, respectively, dependent
thereon, are not described in the written description in the Specification as is
the limitation “an at least 5-fold reduction in gas permeability than a coating
formed of said non-elastomeric polymer alone” in representative claim 1
(emphasis supplied), and the at least 25- fold, 50-fold, 100-fold, 500-fold,
and 1000-fold limitations in claims 2-6, respectively, dependent thereon.
Ans. 3-5. We note here that independent claims 39 (process) and 42
(product) and claims dependent thereon specify the same ranges with respect
to the reduction in gas permeability as claims 36-38.
B.
Appellants reproduce Specification Tables 1 and 2 in the Appeal Brief
“with an added column wherein the permeability ratio [of coating barrier
with treated filler: “coating formed with untreated filler”] has been
calculated.” App. Br. 28-30; see Spec. 42 and 55. We find that in
Specification Tables 1 and 2, the barrier coatings of Examples 1 and 10 were
prepared “unfilled,” that is, a coating formed with an “unfilled” polymer;
Appeal 2009-014462
Application 10/741,741
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Examples 2 and 11 were prepared with “untreated” filler; and Examples 3-9
and 12-20 were prepared with filler “treated with an acid or base prior to
being combined with the non-elastomeric polymer,” as required by claims
1 and 36, using the specified acid or base for the specified time period. We
find that Specification Tables 1 and 2 have a column showing the ratio of
“Reduction in Permeability” of the filler containing barrier coating
Examples 3-9 and 12-20 over the unfilled barrier coating Examples 1 and
10, with respect to the invention encompassed by claim 1. We find that in
reproduced Tables 1 and 2 in the Appeal Brief, the added column shows the
ratio of “Reduction in Permeability Relative to Untreated Filler” of the filler
containing barrier coating Examples 3-9 and 12-20 over the unfilled barrier
coating Examples 2 and 11, with respect to the invention encompassed by
claim 36. Thus, reproduced Tables 1 and 2 provide the two respective ratios
for each illustrative example.
Appellants submit that the evidence in reproduced Tables 1 and 2
provides support for the claimed invention encompassed by claim 36
because the embodiments with treated filler in Examples 3-8 and Examples
12-20 provides increased barrier in a multiple to compared embodiments
with untreated filler in Example 2 and Example 11. App. Br. 30-31.
Appellants argue that the ratios shown in the “Reduction in Permeability
Relative to Untreated Filler” column “at least support the improvement of at
least 2-fold (e.g., 2.5, Example 3), of at least 5-fold (e.g., >5.0, Example 7),
and at least 10 fold (e.g., >12.5, Example 7).” App. Br. 31.
The Examiner submits that the evidence in reproduced Tables 1 and 2
does not establish that Appellants were in possession of the invention
encompassed by representative claim 36 at the time the application was
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Application 10/741,741
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filed. Ans. 4-5 and 9-10. The Examiner finds that Examples 3 and 7 shows
a 2.5-fold reduction, and a greater than 5.0-reduction, respectively, and
further that Example 15 shows a greater than 9.1 reduction. Ans. 4-5 and
9-10. According to the Examiner, only Example 7 shows a claimed range
endpoint, for the 5.0-fold limitation, and in any event, for each of Examples,
“the data is only for specific compositions and cannot support a broader
composition like presently claimed” and thus does not establish the claimed
“property” of the barrier coating for the claimed generic compositions. Ans.
4-5 and 9-10.
C.
We find that, in addition to the data in the Tables pointed out by
Appellants and the Examiner, in reproduced Table 2, Example 17 has a
reduction in permeability relative to untreated filler of 1.3-fold, and thus
does not fall within claim 36. We further find that while Appellants describe
the ranges for the reduction in gas permeability relative to unfilled barrier
coatings in representative claims 1-6 in the written description in the
Specification, there are no examples in reproduced Tables 1 and 2 at the
lower range endpoints 5-fold, 25-fold, 500-fold, and 1000-fold, as only the
lower range endpoints 50-fold and >100-fold are illustrated in Examples
3 and 7. See Spec., e.g., 5:26 to 7:6.
D.
‘“[T]he test for sufficiency [of written description] is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date.’” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en banc) (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d
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Application 10/741,741
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1555, 1563 (Fed. Cir. 1991). The written description in the original
disclosure as a whole does not have to describe the invention later claimed in
haec verba, but such written description “must . . . convey with reasonable
clarity to those skilled in the art that as of the filing date sought, [appellant]
was in possession of the invention . . . now claimed.” Vas-Cath, 935 F.2d at
1563-64. “[A] sufficient description of a genus requires the disclosure of
either a representative number of species falling within the scope of the
genus or structural features common to the members of the genus so that one
of skill in the art can ‘visualize or recognize’ the members of the genus.”
Ariad, 698 F.3d at 1350. There are no “bright-line rules governing, for
example, the number of species that must be disclosed to describe a genus
claim, as the number necessarily changes with each invention.” Ariad,
698 F.3d at 1351. The finding of whether Appellants were in possession of
a later claimed genus to products and to processes defined by, among other
things, a property possessed by the products specified as a range, is a matter
of fact based on the analysis of the facts of record in each case, and is not
determined by any holding with respect to a certain number of species or
other such considerations in other product and process cases. See, e.g.,
Ariad, 698 F.3d at 1351; In re Johnson, 558 F.2d 1008, 1019 (CCPA 1977),
and cases explained therein; In re Wertheim, 541 F.2d 257, 262-65 (CCPA
1976), and cases cited therein (“Broadly articulated rules are particularly
inappropriate in this area. Mere comparison of ranges is not enough, nor are
mechanical rules a substitute for analysis of each case on its facts to
determine whether an application conveys to those skilled in the art the
information that the applicant invented the subject matter of the claims.”
(citations omitted)).
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E.
The dispositive issue raised by the positions advanced by Appellants
and the Examiner is whether the Examiner erred in finding, as a matter of
fact, that the evidence in reproduced Tables 1 and 2 would not have
conveyed to one skilled in the art that Appellants were in possession of the
invention encompassed by representative claims 36-38 at the time the
application was filed because there is no illustrative example in the Tables or
other description in the Specification of the lower end point of the specified
ranges with respect to reduction in gas permeability of a claimed barrier
coating relative to “a like coating formed with untreated filler” specified in
representative claims 36-38. On this record, we agree with Appellants that
the evidence in reproduced Tables 1 and 2 is sufficient to establish that
Appellants were in possession of the invention encompassed by
representative claims 36-38 at the time the application was filed.
We know of no case holding that the precise end point of a range must
be specified either in the narrative in the Specification or in an illustrative
example to convey to one skilled in the art that Appellants had possession of
a claimed invention, product or process, defined by that range. Here,
Appellants’ Specification provides a description of the property of reduction
in gas permeability of a claimed barrier coating relative to a coating that
differs solely in that the filler is untreated prior to combining the same with
the non-elastomeric polymer, as specified in claims 36-38, in presenting
“untreated” Examples 2 and 12 in Specification Tables 1 and 2. We find
that one skilled in the art can calculate the extent to which each of the
illustrative examples exhibit this property vis-à-vis the untreated examples in
Specification Tables 1 and 2, and Appellants presented these calculations in
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Application 10/741,741
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reproduced Tables 1 and 2. (App. Br, 29-30).
We observe from the data supplied by Appellants in reproduced
Tables 1 and 2 that the claimed 2-fold endpoint in claim 36 is straddled by
the 1.3-fold increase in Example 17, which does not fall within claim 36,
and the 2.5-fold increase in Example 3, and that the claimed 10-fold
endpoint in claim 38 is straddled by the >9.1-fold increase in Example 15
and the >12.5-fold increase in Example 17. In this respect, the Examiner
does not dispute that the claimed 5-fold endpoint is evidence by Example 7.
Thus, we find that, as a matter of fact, one skilled in the art can recognize the
members of the genus of claim 36 and the subgenera of claims 37 and 38
from the data in Specification Tables 1 and 2.
We are not persuaded otherwise by the Examiner’s unsupported
contention that the data based on the specific compositions in Specification
Tables 1 and 2 cannot support a “broader composition” as claimed. The
Examiner has the burden of establishing that a claim does not comply with
§ 112, first paragraph, written description requirement, with evidence or
reasons why, as a matter of fact, the written description in the Specification
as filed would not reasonably convey to persons skilled in this art that
Appellants were in possession of the now claimed invention. See, e.g., In re
Alton, 76 F.3d 1168, 1172, 1175-76, (Fed. Cir. 1996) (citing Wertheim,
541 F.2d at 262-64). Here, the Examiner has not carried the burden with
evidence or scientific reasoning establishing that the examples in
Specification Tables 1 and 2 are insufficient to support the claimed invention
encompassed by claims 36-38.
Accordingly, in the absence of a showing that the claimed inventions
encompassed by claims 36-44 do not as a matter of fact comply with
Appeal 2009-014462
Application 10/741,741
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35 U.S.C. § 112, first paragraph, written description requirement, we reverse
this ground of rejection advanced on appeal.
II. § 103(a): claims 1 and 36 over Feeney
A.
The dispositive issue raised by the positions advanced by Appellants
and the Examiner is whether the Examiner erred in finding that adjusting the
pH of Feeney’s barrier coating compositions by adding a base thereto as
taught by the reference would avoid aggregation and result in the claimed
barrier coating of representative product-by-process claims 1 and 36 that
intrinsically has the claimed reduction in gas permeability compared to non-
elastomeric polymer alone, even in view of the evidence to the contrary in
the Second Feeney Declaration.1 Ans. 5-7 and 10-12; App. Br. 16-20 and
33-34; Reply Br. 2 and 3-5. We agree with Appellants that the disclosure in
Feeney and the evidence in the Second Feeney Declaration establish that the
Examiner erred in these respects.
We determine that each of representative claims 1 and 36 specifies a
barrier coating prepared with a “substantially exfoliated silicate filler is
treated with . . . [a] base prior to being combined with the non-elastomeric
polymer,” with the resulting polymer exhibiting a specified reduction in gas
permeability relative to a barrier coating with an unfilled polymer and a
barrier coating with an untreated filler, respectively.
The Examiner contends that the claimed barrier coatings encompassed
by the these claims and the barrier coatings of Feeney are the same because

1 Second Declaration Under 37 C.F.R. § 1.132 of Carrie A. Feeney executed
September 18, 2007, and submitted with the Amendment filed September
20, 2007.
Appeal 2009-014462
Application 10/741,741
10
Feeney discloses that a suitable amount of a base can be used to adjust the
pH of the barrier coating composition to avoid aggregation, and “[i]t has not
been shown how pretreating the silicate with . . . a base is any different than
adding a base to a dispersion with the silicate and non-elastomeric polymer”
as claimed.2 Ans. 5-6. The Examiner contends that because Feeney
“teaches treating the barrier coating composition with base, the barrier
coating intrinsically has the presently claimed reductions in gas
permeability, absent evidence to the contrary that is reasonably
commensurate in scope with the scope of the claims.” Ans. 7-8. According
to the Examiner, the addition of the base in Feeney would “improve
dispersion and decrease aggregation,” and “[i]mproved flocculation results
in improved dispersion and inherently provides for decrease gas
permeability” such that “it is predictable that treating a silicate filler with . . .
base (regardless of stage) would provide for improved dispersion and
thereby a reduction in permeability.” Ans. 10-11.
Appellants contend that the Examiner’s contention that post-treatment
of the barrier coating composition with a base as disclosed in Feeney is
“somehow equivalent to pre-treatment” is rebutted by the data in the Second
Feeney Declaration. App. Br. 33. According to Appellants, the data

2 We agree with the Examiner’s finding that Feeney would have disclosed
to one of ordinary skill in the art that the pH of the barrier coating
composition can be adjusted with a base. Ans. 6; see Feeney 11:24-27.
However, Feeney does not disclose using an acid for that purpose, and
indeed, the Examiner refers to Cruz with respect to the use of an acid with a
silicate. Ans. 10. We have not considered Cruz in this respect here because
Cruz is not relied on in this ground of rejection. See In re Hoch, 428 F.2d
1341, 1342 n. 3, (CCPA 1970); cf. Ex parte Raske, 28 USPQ2d 1304,
1304-05 (BPAI 1993).
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Application 10/741,741
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establishes that post-treatment with a base is ineffective compared to
pre-treatment as claimed. App. Br. 33; see also Reply Br. 3.
The Examiner contends that the data in the Second Feeney
Declaration does not show “that the process steps in the instant product-by-
process claims (i.e., pretreating the silicate filler with . . . base) provides for
a different product, wherein the data is reasonably commensurate in scope
with the scope of the claims,” pointing out that “the data is only for a
specific base in one amount with one non-elastomeric polymer system.”
Ans. 11. The Examiner further contends that the evidence in the Second
Feeney Declaration “establishes that an exfoliated silicate filler posttreated
with base provides for a reduction in permeability of 7-fold as compared to
the gas permeability of the non-elastomer alone and therefore discloses the
reduction in has permeability property of claims 1 and 1,” pointing out that
“claim 1 requires only a 5-fold improvement.” Ans. 11.
Appellants reply that Feeney’s discussion of pH adjustment would not
have suggested pretreating the filler prior to combining it with the aqueous
dispersion. Reply Brief 4, citing Feeney 11:11-27. Appellants contend that
the data in the Second Feeney Declaration establishes that “treatment of the
composite after mixing as suggested by [Feeney] is ineffective, showing that
the Examiner’s speculation is erroneous,” and does not establish
obviousness. Reply Br. 5.
B.
We find that Feeney would have disclosed to one of ordinary skill in
the art that “conventional agents,” including, among others, NH4OH, can be
added to a barrier coating composition “to adjust the pH to between 8 to
about 11, . . . provided that care is taken to avoid agglomeration” of the filler
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Application 10/741,741
12
which can be caused by the addition of a base and would “adversely affect[]
permeability reduction.” Feeney 11:11-14 and 24-27.
We find that the Second Feeney Declaration presents a comparison
between Example 15, in which the exfoliated silicate filler is pre-treated
with “18% NH4OH, 30 min,” and Comparative Example “15 modified,” in
which the exfoliated silicate filler is post-treated with “18% NH4OH, 30 min
added after formulation.” Dec. 6, Table 2, and ¶¶ 4 and 5. The reported
results are that Example 15 has a permeability of <0.0033 and a reduction in
permeability relative to unfilled polymer of >818; and Comparative
Example 15 modified has a permeability of 0.42 and a reduction in
permeability relative to unfilled polymer of 7.0. We find that the reduction
in permeability of Example 15 relative to untreated filler of Example 11 is
>9.1, and the reduction in permeability of Comparative Example 15
modified relative to untreated filler of Example 11 is 0.0777. See App. Br.
30, reproduced Table 2; Dec. 6, Table 2. We find that the permeability and
reduction in permeability relative to unfilled polymer and to untreated filler
reported for Example 14 treated with NH4OH reported in reproduced Table
2 is similar to that of Example 15. App. Br. 30.
C.
“If the product in a product-by-process claim is the same as or
obvious from a product of the prior art, the claim is unpatentable even
though the prior art product was made by a different process.” In re Thorpe,
777 F.2d 695, 697 (Fed. Cir. 1985); see also, e.g., In re Spada, 911 F.2d
705, 708 (Fed. Cir. 1990)) (“[W]hen the PTO shows sound basis for
believing that the products of the applicant and the prior art are the same, the
applicant has the burden of showing that they are not.”); In re Best, 562 F.2d
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1252, 1255-56 (CCPA 1977) (When “the claimed and prior art products are
identical or substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an applicant to prove
that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product.”).
D.
The Examiner has not adduced any evidence or scientific reasoning
establishing that it would have reasonably appeared to one of ordinary skill
in the art that the addition of a base such as NH4OH to the formulated barrier
coating composition to adjust the pH of the composition as disclosed by
Feeney would result in the same product and associated properties specified
in representative product-by-process claims 36 and 38. Indeed, to the
contrary, Feeney would have taught that the addition of a base to the
composition can cause agglomeration of the filler which can adversely affect
the permeability of the barrier coating obtained from the composition. Thus,
on this record, we agree with Appellants that the Examiner has not
established a case of obviousness of the claimed barrier coatings encompass
by claims 1 and 36 on this disclosure in Feeney alone.
We are reinforced in our view of Feeney by the evidence with respect
to Example 15 and Comparative Example 15 modified in the Second Feeney
Declaration. Indeed, the substantial difference in permeability properties
and in the reduction of permeability relative to barrier coatings that do not
contain a filler and contain untreated filler, as specified in claims 1 and 36,
establishes a difference in kind between these compared barrier
compositions that differ solely in the point of addition of a base to the filler
in the composition. The Examiner has further failed to support the
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contention that the evidence based on Example 15 and Comparative
Example 15 modified is not commensurate in scope with the claims. Indeed,
the evidence was submitted to establish that Feeney’s pH adjustment would
not result in the claimed barrier coatings, and the Examiner has not pointed
out why this evidence is insufficient for that purpose. In this respect, the
evidence in reproduced Table 2 shows that other example treated with
NH4OH behaves in similar manner to Example 15. Thus, there is no
evidence in the record supporting the contention that the addition of a base
to adjust the pH of a barrier coating composition as taught by Feeney would
result in the claimed barrier coatings encompassed by claims 1 and 36.
We are mindful that, as the Examiner points out, Comparative
Example 15 modified is a barrier coating that exhibits a 7-fold reduction in
permeability relative to an unfilled polymer barrier coating. However, on
this record, the Examiner has not established that the claimed barrier
coatings encompassed by representative claim 1 as whole would have been
obvious to one of ordinary skill in the art over the barrier compositions of
Feeney. The evidence that the barrier composition of Comparative Example
15 modified exhibits a claimed property is insufficient to establish otherwise
because the evidence does not establish that this barrier coating as a whole
falls within claim 1.
Accordingly, in the absence of a case of obviousness, we reverse the
ground of rejection of claims 1-6, 8, 9, 12, 13, 16-22, 25, 26, 29-33, and
35-44 under 35 U.S.C. § 103(a) over Feeney.
III. § 103(a): claims 1 and 36 over Feeney and Cruz
The dispositive issue in this ground of rejection is whether the
Examiner erred in combining Feeney and Cruz, leading to the modification
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of Feeney’s exfoliated silicate filler with an organic acid following the
teachings of Cruz to improve dispersion of the exfoliated silicate filler in
Feeney’s barrier coating compositions, thus arriving at the claimed barrier
coatings encompassed by representative claims 1 and 36. Ans. 7-8 and 13.
On this record, we agree with Appellants’ position that the Examiner erred
in this respect. App. Br. 38-39; Reply Br. 5-6.
The Examiner contends that “while Cruz fails to disclose exfoliated
silicate, Cruz is used as a teaching reference” that “treating the
aluminosilicates with an acid such as acetic and citric acids provides for a
higher degree of hydration and prevents flocculation” which “results in
improved dispersion and inherently provides for decrease gas permeability.”
Ans. 13; see also Ans. 7-8. The Examiner contends that “given that
[Feeney] modified by Cruz teaches treating the barrier coating composition
with acid, the barrier coating intrinsically has the presently claimed
reduction in gas permeability.” Ans. 8.
We found above that the Examiner has not established that the
addition of base to Feeney’s barrier coating composition would have
reasonably resulted in the claimed barrier coatings encompassed by claims 1
and 36. The Examiner has further not pointed to a teaching in Feeney
leading to the addition of an acid to the barrier coating compositions
disclosed therein for any purpose, and we find no such disclosure therein.
See above note 2. We agree with Appellants’ position that Cruz teaches
treating silicate granules and not exfoliated silicate filler having an aspect
ratio of greater than 25 as claimed in claims 1 and 36. App. Br. 38-39, citing
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First Feeney Dec. ¶ 6;3 see also Reply Br. 5-6.
Thus, as Appellants contend, the Examiner has adduced no reason
why one of ordinary skill in the art would have combined Feeney and Cruz
to modify Feeney’s barrier coating compositions by the addition of an acid,
and thus the barrier coatings disclosed therein, leading to the claimed barrier
coatings of claims 1 and 36.
Accordingly, in the absence of a case of obviousness, we reverse the
ground of rejection of claims 1-6, 8, 9, 12, 13, 15-22, 25, 26, 28-32, and
35-44 under 35 U.S.C. § 103(a) over Feeney in view of Cruz.
IV.
In the absence of a factual underpinning for the grounds of rejection
over Feeney alone and in view of Cruz, we further determine the absence of
a case of obviousness on this basis in the ground of rejection of claims 10,
11, 23, and 24 under 35 U.S.C. § 103(a) over either Feeney or Feeney in
view of Cruz, further in view of Tachika, reversing this ground of rejection
as well.
The Primary Examiner’s decision is reversed.
REVERSED

ssl

3 Declaration Under 37 CFR § 1.132 of Carrie A. Feeney executed
December 11, 2006, and submitted with the Amendment filed December 12,
2006.