Ex Parte Panz et al

Board of Patent Appeals and Interferences

Feb 9, 2011

11036987 (B.P.A.I. Feb. 9, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHRISTIAN PANZ, RENE ALLERDISSE, HELGA OBLADEN,
MARIO, LOEBBUS, ANJA LUKAS, ROLAND BERGMANN, and
KARL MEIER
____________

Appeal 2010-004297
Application 11/036,987
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-004297
Application 11/036,987

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-8 and 22-29. An oral hearing was held on February 3,
2011. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Representative claim 1 reads as follows:
1. A precipitated silica having
BET 100-190 m2/g,
Modified Sears number 8-20 ml/(5g),
Sears number/BET ratio <0.12 ml/(5 m2), and
pH >8.

Claims 1-8, and 22-29 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Esch (US 5,846,506, issued December 8, 1998).
Claims 23 and 28 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combined prior art of Esch and Blume
(US 2003/0082090 A1, published May 1, 2003).
Claim 27 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over the combined prior art of Esch and Abe (US 5,989,510, issued
November 23, 1999).
OPINION
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) quoted with
approval in KSR Int'l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
2
Appeal 2010-004297
Application 11/036,987

The fact finder must be aware “of the distortion caused by hindsight
bias and must be cautious of arguments reliant upon ex post reasoning.”
KSR Int'l. Co. v. Teleflex Inc., 550 U.S. at 421(citing Graham v. John Deere
Co. of Kansas City, 383 U.S. 1, 36 (1966) (warning against a “temptation to
read into the prior art the teachings of the invention in issue”)).
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 product was made by a different process. See In re Thorpe, 777 F.2d
695, 697 (Fed. Cir. 1985); In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983).
Although product-by-process claims are limited by and defined by the
process, determination of patentability is based on the product itself. In re
Brown, 459 F.2d 531, 535 (CCPA 1972).
Applying the preceding legal principles with respect to obviousness to
the factual findings in this record, we determine that the Examiner has not
properly identified factual findings and reasoning for establishing a prima
facie case of obviousness based on the applied prior art, for essentially the
reasons given by Appellants (see generally App. Br.; Reply Br.).
Specifically, we agree with Appellants that it is apparent that the
Examiner has incorrectly interpreted Example 2 of the Esch reference as
precluding Esch’s treatment step with acid at pH 5 as described in Example
1 to produce the final precipitated silica product (App. Br. 6-7; Esch col. 7,
ll. 4-5 (“the same procedure is used as in Example 1, with the exception that
. . .)”). We also agree with the Appellants that the Examiner has not
provided any evidence or persuasive technical reasoning why the silica in
3
Appeal 2010-004297
Application 11/036,987

the alkaline reaction solution of Esch would have the properties recited in
claim 1 (Ans. generally; See App. Br. 9; Reply Br. 2).2
Moreover, with respect to product by process claim 223, the Examiner
has failed on this record to provide any analysis of this claim separate from
the flawed interpretation of the Esch reference as applied to product claim 1,
and has also failed to explain with any reasonable specificity why the
product obtained in Esch would have the same or similar properties as the
product recited in claim 22, since Esch does not perform an alkalifying step
of the precipitated silica as required in method claim 9.
The additional references applied in the remaining rejections have not
been relied upon by the Examiner to cure the deficiencies noted above.
On this record, we cannot say the Examiner has established a prima
facie case of obviousness within the meaning of 35 U.S.C. § 103(a) for the
claims on appeal. For these reasons and those set out in the Briefs, we
reverse all of the Examiner’s § 103 rejections on appeal.
CONCLUSION
In summary, the rejections before us on appeal are reversed.

REVERSED
tc

2 Moreover, the broadest reasonable interpretation of claim 1, when fairly
read in light of the Specification, is that of the final silica product, not an
intermediate product in the reaction solution as the Examiner apparently
suggested during prosecution (see Examiner Interview Summary mailed
June 18, 2008).
3 While claim 22, and method claim 9 from which it depends, do not recite
any specific properties for the silica, the Examiner on this record has failed
to provide any analysis of this claim in relation to the applied prior art.
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Appeal 2010-004297
Application 11/036,987

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