Appeal No. 1998-1353 Page 5
Application No. 08/488,288
the Appellants that Kaliski’s description at column 41, lines 33-66 does not teach the claimed covalent
bonding of organic groups on the surface of the oxide particles (Brief, page 4). Column 41, lines 33-66
describes imparting organophilic properties to the aggregate-TiO pigment product by adding functional
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organic, cationically active compounds with at least two reactive groups to the solutions of inorganic
crosslinking salts used for the in-situ synthesis of the complex microgel cements employed in the
preferred mode of manufacturing the aggregate-TiO pigment products (col. 41, lines 33-43). Kaliski
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specifically indicates that the functional organic compounds modify the surface of the microgel and only
indirectly modify the aggregate-TiO pigment products (col. 41, lines 59-66). No covalent bonding
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with the TiO is described nor has the Examiner provided a sufficient reason to believe that such
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covalent bonding inherently occurs. Therefore, the claims are not anticipated by the description of
aggregate TiO provided by Kaliski.
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In addition, the Examiner’s attempt at establishing the obviousness of using a surface modified
TiO in the aggregate-TiO of Kaliski falls short. In the argument section of the Substitute Answer, the2 2
Examiner states that “the surface modification of monodispersed particles is known and admitted
conventional on page 4, line 36 - page 5, line 1 of the specification.”(Substitute Answer, page 10). At
page 4, line 36 - page 5, line 1, the specification states that “[a] corresponding two-stage process for
the preparation of various metal oxides and also mixed oxides which moreover also have glycolic
groups bonded chemically to the surface is furthermore described in EP 0 391 447.” However, the
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