Appeal No. 1997-0545
Application 08/224,063
We have carefully considered all of appellants’ arguments. We cannot subscribe to appellants’
characterization of the process of Schumann as involving “heated ‘melt’ mixing” with the use of an
“external heat source” (principal brief, pages 6-8; see also reply brief, pages 2-3 and 4-6). Indeed,
Schumann discloses the range of “45 to 48° C” and teaches that it is without influence on the exothermic
reaction between the alkali metal silicate and alkali metal hydroxide in an aqueous environment. Not
only does this range fall within the “ambient” temperature range defined by appellants in the specification
(page 7), but it is significantly below all of the maximum temperatures “attained by the reaction mixture
due to an exothermic reaction” in specification “Experimental Procedure (Trials 30-57)” as reported in
specification Table 9. We further observe from specification Table 9 that more than half of the reported
maximum temperatures fall within the temperature range of “92 [sic, 90]-100°C” that appellants allege
to form part of Schumann’s own process (principal brief, page 8), but this range in fact is found in
Schumann’s discussion of a prior art reference (pages 4 and 8). Thus, there is no evidence that the
initial heating of the reaction mixture to “45 to 48° C” as disclosed by Schumann involves melting either
the reaction mixture or the reaction product as appellants allege (principal brief, page 9). Accordingly,
the process disclosed by Schumann clearly anticipates the claimed invention encompassed by appealed
claim 92, and the lack of novelty of the claimed process so evinced further establishes the obviousness
of that process. We note here that it is well settled that arguments based on allegations of unexpected
results and teaching in the reference leading away from the claimed invention are not relevant to a
rejection under § 102(b). See, e.g., Celeritas Technology Ltd. V. Rockwell International Corp.,
150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522 (Fed. Cir. 1998); Fracalossi, supra.
With respect to Olson, we agree with appellants that there was “an addition of externally
supplied heat” in the processes of this reference because, in our view, it resulted from residual heat
remaining in the hydrated alkali metal silicate medium to which other ingredients were added, as we
discussed above in reversing the ground of rejection under § 102(b). However, we cannot agree that
such external heating due to the hydrated alkali metal silicate medium is “heated melt mixing” (principal
brief, 11-12; see also reply brief, pages 5-6) and thus that the claimed invention encompassed by claim
92 is nonobvious over this reference. Indeed, here, as was the case with the appellants’
characterization of the disclosure in Schumann, appellants’ arguments involve the notion that the
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