Appeal No. 1996-2857
Application 08/191,735
the contrary by appellant’s arguments (brief, e.g., page 6) or the testimony of Mr. Bauer in his
declaration (¶ 10) in view of the open language of claim 15 and, indeed, find no disclosure in4
appellant’s specification on which one of ordinary skill in the art would arrive at the same conclusion as
appellant and Mr. Bauer. We find that the products encompassed by product claim 9 to be specified in
essentially the same manner as in claim 15.
The position of the examiner with respect to Markhoff-Matheny ‘461, Bergna ‘017 and,
indeed, Cottringer ‘364, can be summed up in his contentions that each of these references teaches the
“same positive process steps as instantly claimed” and thus the “product obtained” would be “the same
as instantly claimed” (answer, page 7, last paragraph, and page 10, last paragraph; see also page 4,
fourth full paragraph, and page 6, fourth full paragraph). However, based on the record developed by
the examiner and appellant that is before us on appeal, we fail to find in any of these references either
the same positive process steps or the same product recited in the appealed claims.
With respect to Markhoff-Matheny ‘461, we must agree with the testimony of Ms.
Markhoff-Matheny in her declaration (¶ 8) (see supra note 4) and with appellant’s arguments (brief,
e.g., pages 5 and 10-11), that mullite would not form a silica coating, as we find no evidence in the
record which would provide any suggestion that the addition of mullite to a gel containing boehmite of
any particle size would, under any process conditions, result in a dispersion of any amount of silica per
se in the gel under any process conditions. Indeed, the disclosure in the specification (e.g., page 11,
line 18, page 12, line 6, and page 15, line 1) as well as in Bergna ‘017 (e.g., col. 4, line 23, and col. 9,
lines 72-73) make it clear that under certain conditions, mullite is formed in the claimed process.
Therefore, upon the submission of the Markhoff-Matheny declaration after final rejection,
appellant had successfully rebutted the prima facie case of obviousness made out over the combined
teachings of Markhoff-Matheny ‘461, and thus the examiner again had the burden of establishing a
prima facie case if he was to continue rejecting the claims over this reference. This burden could have
been maintained by advancing on the record evidence or scientific reasoning showing that silica per se
4Appellant submitted declarations under 37 CFR § 1.132 by Mr. Ralph Bauer and by Ms. Carole J.
Markhoff-Matheny on December 7, 1994 (Paper No. 23).
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