Appeal No. 1997-4318
Application 08/469,806
solubility of the sodium silicate in the water content of the moist concrete which would ‘certainly’
promote the dispersion of the pigment in the moist concrete during mixing (homogenization),” and that
the “crush resistant” pigment particles of this reference would be expected to disperse the pigment in
moist concrete due to the recognized “solubility of the sodium silicate in water” (pages 5-6).
Appellants have addressed this position by presenting evidence in Linde I that iron oxide red
pigment bonded with the amount of sodium silicate and produced in the four different forms, that is,
untreated and successively treated pigment particles, as taught in 3M GB ‘259 provides “virtually no
tinting strength (Fig. 2/Encl. 3), in contrast to granules which are formed from iron oxide red with low
contents (0.05% - O.5%) of SiO2 (Fig. 3/Encl. 4),” wherein Dr. Linde explains that “[i]n the sensitivity
test the granulates display a high degree of hardness, which explains the reduction in tinting strength”
(page 9; see breif, pages 13-15). Appellants further presented evidence in Linde II that water does not
break apart the claimed microgranulate pigments while the microgranulate pigments of Jungk do break
apart and disperse in water (¶¶ 7-11; see brief, page 15-16; see answer, pages 11-12).
Thus, the evidence now of record effectively rebuts the findings of the prior merits panel based
on the record in Appeal No. 93-3107 and the examiner has not carried the burden of establishing a
prima facie case of obviousness on the present record. See Rinehart, supra.
Accordingly, the decision of the examiner is reversed.
Other Issues
The examiner should consider the following issues in any further prosecution of the appealed
claims. As we found above, appealed claims 13 and 26 both contain the limitation “substantially free of
organic liquefiers” which we interpreted as specifying that the microgranulate inorganic pigment
composition is considerably but not wholly free of “organic liquefiers.” As we further found above,
appellants argue that their claimed invention is free of “organic liquefiers” as shown in their specification.
This raises two issues.
First, since the claims clearly provide for microgranulate inorganic pigments that can contain
some “organic liquefiers” which appellants do not regard to be within their claimed invention, do the
appealed claims comply with 35 U.S.C. § 112, second paragraph (“. . . claiming the subject matter
which the applicant regards as his invention.”)? It is well settled that applicants’ mere intent as to the
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