Ex Parte Bice et al - Page 2




          Appeal No. 2004-0448                                                        
          Application No. 09/636,311                                                  


          1.   In the method of producing a hydrophobic particulate                   
               inorganic oxide by contacting an acidic aqueous suspension             
               of a particulate inorganic oxide selected from the group               
               consisting of precipitated silica, colloidal silica and                
               mixtures of such inorganic oxides, with an organometallic              
               compound to form an acidic aqueous suspension of hydrophobic           
               particulate inorganic oxide, optionally in the presence of a           
               surfactant and/or a water miscible solvent, and recovering             
               said hydrophobic particulate inorganic oxide, the                      
               improvement comprises using said organometallic compound in            
               an amount sufficient to hydrophobize the inorganic oxide,              
               such that the inorganic oxide has a hydroxyl content of from           
               2 to 15 OH/nm2, a carbon content of from 0.1 to 6 weight               
               percent, and a methanol wettability of from 15 to 45                   
               percent, in an aqueous suspension of inorganic oxide having            
               a pH of 2.5 or less, and treating the acidic aqueous                   
               suspension of the hydrophobic particulate inorganic oxide              
               with acid neutralizing agents to produce a hydrophobic                 
               particulate inorganic oxide having a pH of from 3 to 10, a             
               carbon content that is substantially non-extractable and an            
               M1 Standard White Area of less than 0.4 percent.                       
                                   THE REFERENCES                                     
          Griffith et al. (Griffith)        5,908,660        Jun.  1, 1999            
          Lightsey et al. (Lightsey)        5,985,953        Nov. 16, 1999            
          Burns et al. (Burns)              6,051,672        Apr. 18, 2000            
                                   THE REJECTIONS                                     
               Claims 1-17 stand rejected under 35 U.S.C. § 103 as being              
          unpatentable over Griffith in view of Lightsey and/or Burns.                
                                       OPINION                                        
               We reverse the aforementioned rejection.  We need to address           
          only the sole independent claim, i.e., claim 1.                             
               The appellants’ claim 1 requires that the hydrophobic                  
          particulate inorganic oxide has an M1 Standard White Area of less           
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