Appeal 2007-1931
Application 10/247,330
the concept of a precipitated silica having a minimum CTAB surface area of
150 m2/g, a minimum BETA surface area of 255 m2/g and a minimum
BETA/CTAB surface area of 1.7. Indeed, although Appellants'
Specification states that the CTAB surface area has a maximum value of 350
m2/g, the Specification fails to describe a minimum value of 150.
We will also sustain that Examiner's rejection of claims 1-5, 7, 17-20,
and 22 over Kirino to the extent it is based upon § 103. As pointed out by
the Examiner and acknowledged by Appellants, Kirino discloses precipitated
silica having a CTAB surface area in the range of 130 - 210 m2/g and a
BET/CTAB ratio of 1.3 - 2.0. A calculation using the maximum values of
210 and 2.0 for the CTAB and BET/CTAB ratio, respectively, yields a BET
value of 420, which is directly within the claimed ranged. As acknowledged
by Appellants, the reference ranges for CTAB and BET/CTAB ratio overlap
the claimed ranges. Accordingly, although Kirino does not exemplify
precipitated silica having values for BET, CTAB and BET/CTAB surface
area ratio within the claimed ranges to support a rejection under § 102, we
agree with the Examiner that the overlapping ranges of Kirino establish a
strong prima facie case of obviousness for the claimed invention. In re
Malagaria, 499 F.2d 1297, 1303 (CCPA 1974).
The fact that the eleven examples of Kirino do not describe
precipitated silica having the three relevant values all within the claimed
ranges does not negate the obviousness of one of ordinary skill in the art
selecting values within the ranges disclosed by Kirino that fall within the
claimed ranges. Moreover, it is well settled that where patentability is
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