Appeal No. 96-0216
Application 07/842,915
silica and an alkali solution in a closed container, and (ii)
maintaining the temperature of the reaction at less than 275EF.
That is, we find no suggestion in the Nakagawa reference to
substitute silica sand (a crystalline starting material) for
biogenetic silica (an amorphous, organic starting material)
derived from burned rice hulls, etc., and to heat said biogenetic
silica within the claimed temperature range. Nor do we find any
suggestion in Blardone to employ biogenetic silica in the method
described by Nakagawa at temperatures not greater than 275EF. On
this record, we only find these suggestions in the appellants’
disclosure. Accordingly, we find that the examiner has relied2
on impermissible hindsight in making his determination of
obviousness. In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780,
1784 (Fed. Cir. 1992); Interconnect Planning Corp. v. Feil, 774
2We find that the examiner has misconstrued the statement
on p. 10, lines 29-33 of the specification, with respect to the
amount of experimentation necessary to determine the optimum
temperature and pressure for making a clear soluble silicate
solution. The specification statement is not an admission as to
the level of skill in the art but, rather, it is a description of
the appellant’s invention. It is the appellants who have
discovered the critically of not heating the reaction components
at temperatures greater than 275E F. See specification examples
4 through 8. The specification statement is merely advising
those skilled in the art that, provided they do not exceed the
275E F limitation, it is possible to vary the temperature and
pressure conditions, and still produce a clear, soluble silicate
solution.
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