Appeal No. 1998-1353 Page 6
Application No. 08/488,288
Examiner has advanced no reason, suggestion, or motivation for substituting the TiO raw material
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described by Kaliski with the metal oxide particles having glycolic groups bonded chemically to the
surface described in the specification as known in the prior art. We, therefore, agree with the
Appellants that while the surface modification of monodispersed particles was known as discussed at
page 4, line 36 to page 5, line 1 of the specification, the Examiner failed to establish that forming
agglomerates with such particles was obvious to one of ordinary skill in the art at the time of invention
(Brief, page 3).
With respect to the process of claim 6, we note that this claim excludes flocculation. In other
words, the claim is limited to the process described in the specification in which binder is dissolved in
solvent (specification, page 7, lines 34-37) and then oxide particles dispersed in the solution of binder
and solvent (specification, page 8, lines 3-5). In contrast, Kaliski describes a process of coflocculating
TiO and binder dispersed in solvent. The binder of Kaliski is not dissolved in the solvent but merely
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dispersed as a solid. While Appellants’ specification describes a process of solid binder dispersion,
claim 6 excludes this alternative process.
For the above reasons, we conclude that the Examiner has failed to establish a prima facie
case of unpatentability over Kaliski.
The Rejection over Barker
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