Interference No. 103,995 Paper 29
Morel v. Sekhar Page 38
disclosure that titanium boride and zirconium boride are suitable [fillers] in combination
with a silicate in a protective coating composition and because zirconium diboride is a
metal salt which would function as an alternate source of boron (Paper 14, p. 7, ¶¶ 15 and
16).
However, as argued by Sekhar in its opposition (Paper 21, p. 6), Weir requires
titanium diboride, not only as a source of boron but also as a generator of nucleation points
for boro-silicate (i.e., glass) growth (fact 65 above, p. 32 and fact 45 above, p. 23).
Moreover, as further argued by Sekhar (Paper 21, p. 6), the metal salt in Weir is clearly an
optional component (fact 65 above, p. 32). Morel has not explained what would have
motivated one of ordinary skill in the art to replace a required component with an optional
component in the coating composition of Weir. Moreover, Morel has not pointed us to
where the record discloses or suggests that zirconium diboride is capable of functioning
as a generator of nucleation points for boro-silicate growth.
In its reply (Paper 24, pp. 7-8), Morel raises new points of argument, namely that it
would have been obvious to combine a glaze-forming silicate matrix with a zirconium
diboride filler as disclosed by Lorkin since both Weir and Lorkin disclose combinations of
titanium diboride and colloidal silica as protective coatings and Lorkin discloses both
titanium boride and zirconium boride as suitable fillers. First, this reply does not appear to
be responsive to any argument raised by Sekhar in its opposition. Raising new points of
argument in a reply is procedurally unfair to an opponent who has no opportunity to
respond thereto. Therefore, Morel is cautioned that replies raising new points of argument
will not be considered. Second, even assuming arguendo, that Morel’s reply was proper,
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