Interference No. 103,995 Paper 29
Morel v. Sekhar Page 21
p. 27). Sekhar further argues that Table 1 in the ‘084 patent suggests that relative
conversion rates of ZiB and TiB per se are temperature dependent. Sekhar still further2 2
argues that Morel has not shown that a similar temperature dependence does not occur in
the presence of colloidal silica, i.e., that ZiB associated with colloidal silica oxidizes more
2
o o
slowly than TiB associated with colloidal silica at 800 C or 1000 C. (Paper 17, pp. 17-
2
18). This argument is not inconsistent with the ‘084 patent.
The Achilles’ heel of Morel’s position (i.e., “What is surprising here is not that
colloidal silica reduces the oxidation rate of both zirconium and titanium diborides ..., but
that the zirconium diboride in combination with colloidal silica is so much better than the
titanium diborides” (Paper 20, p. 8)) is that a welter of variables affect the test results and
Morel has provided essentially a “single-variable” comparison. To wit, the optimal amount
of colloidal silica vis-a-vis a given amount of diboride may not be the same for different
diborides. Moreover, it is unclear whether other known result-effective variables, such as
coating thickness and drying rates, were held constant in the comparisons in the ‘084
patent. Morel has the burden of explaining its data. Secondly, when patentability is
predicated upon some range or other variable, as with Morel claims 2 and 5, the movant
must show that such variables are critical by establishing that the claimed values achieve
unexpected results. See In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-
37 (Fed. Cir. 1990). Morel has not pointed us to where the ‘084 patent compares a
coating composition containing zirconium diboride and colloidal silica in weight ratios
outside the 1:1 and 9:1 required by Morel claims 2 and 5 to a coating composition within
the required weight ratio, i.e., to anything indicating the criticality of the claimed range.
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