Ex parte Sigel et al.

Board of Patent Appeals and Interferences

Mar 18, 1999

08051886 (B.P.A.I. Mar. 18, 1999)

Application for patent filed April 26, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte GARY A. SIGEL and ROMAN C. DOMSZY
_____________
Appeal No. 96-2575
Application 08/051,8861
______________
ON BRIEF
_______________
Before KIMLIN, PAK and WALTZ, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-7,
and 9-18, all the claims remaining in the present application.
A copy of illustrative claim 1 is appended to this decision.
The examiner relies upon the following references as
evidence of obviousness:
Appeal No.96-2575
Application 08/051,886
2
Kratel et al. (Kratel '487) 3,953,487 Apr. 27, 1976
McDaniel 4,190,457 Feb. 26, 1980
Kratel et al. (Kratel '587) 4,191,587 Mar. 04, 1980
Appellants' claimed invention is directed to a process
for preparing a xerogel that comprises contacting an inorganic
wet gel with a silicon-nitrogen compound of the recited
formula. The xerogels of the present invention have a low
density and high porosity and find utility as thermal
insulation.
The appealed claims stand rejected under 35 U.S.C. § 103
as being unpatentable over McDaniel in view of Kratel '487 and
Kratel '587.
Upon careful consideration of the opposing arguments
presented on appeal, we concur with appellants that the prior
art applied by the examiner fails to establish a prima facie
case of obviousness for the claimed subject matter.
Accordingly, we will not sustain the examiner's rejection.
There is no dispute that McDaniel discloses a process for
preparing a xerogel comprising contacting an inorganic
hydrogel with a silicon-nitrogen compound. However, as
appreciated by the examiner, McDaniel does not disclose the
Appeal No.96-2575
Application 08/051,886
3
use of silicon-nitrogen compounds of the recited formula.
Consequently, the examiner
relies upon the Kratel references for teaching a reaction of
appellants' silicon-nitrogen compounds with SiO . However, as2
explained by appellants, the flaw in the examiner's reasoning
is that the Kratel references are not directed to reacting the
silicon-nitrogen compounds with a wet gel to form a xerogel,
as required by the appealed claims and disclosed by the
primary reference, McDaniel. While the examiner points to the
mention of aerogels and xerogels in the Kratel patents, the
references teach reacting the silicon-nitrogen compounds with
dehydrated silica gels or xerogels, not with wet inorganic
gels to form a xerogel. As properly noted by appellants, the
"fine-particle size SiO to be reacted with the organosilicon2
compounds" (Kratel '487 at column 2, lines 32 and 33) is a
dry, dehydrated material, not a wet gel. In essence, whereas
appellants and McDaniel are directed to forming a xerogel from
an inorganic wet gel, the Kratel references are concerned with
modifying dry SiO (which can be already-formed xerogels) by a2
Appeal No.96-2575
Application 08/051,886
4
reaction with a silicon-nitrogen compound followed by
mechanical comminution. In our view, the Kratel references
would have provided no teaching or suggestion of modifying the
process of McDaniel for forming an inorganic xerogel.
Inasmuch as the applied prior art fails to establish a
prima facie case of obviousness, it is unnecessary to evaluate
the probative value of the Domszy declaration.
One final point remains. Appellants at page 5 of their
principal brief, urge separate patentability for ten different
groups of claims (A-J) and provide appropriate arguments in
the body of the brief. As a result, the examiner erred in not
agreeing with appellants that the appealed claims do not stand
or fall together because "the claims would not be separately
patentable if claims 1 and/or 10 were unpatentable. Further,
the same combination of references is applied against every
claim on appeal herein." (page 2 of answer). When an
appellant provides separate arguments for different claims on
appeal, it is the examiner's burden to treat every separately
argued claim and provide factual support for a rejection under
35 U.S.C. § 103, whether or not the same combination of
Appeal No.96-2575
Application 08/051,886
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references is applied against every separately argued claim.
We invite the examiner's attention to 37 CFR § 1.192 (c)(7)
and (c)(8), as well as Ex parte Schier, 21 USPQ2d 1016, 1018-
19 (Bd. Pat. App. & Int. 1991).
In conclusion, based on the foregoing, the examiner's
decision rejecting the appealed claims is reversed.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
vsh
Appeal No.96-2575
Application 08/051,886
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Appeal No.96-2575
Application 08/051,886
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Robin M. Davis
Armstrong World Industires, Inc.
Patent Department
P.O. Box 3001
Lancaster, PA 17604