Appeal No. 2001-1231
Application No. 08/976,371
about 19 nm, with the teaching that any of these types of carbon
black may be used in the invention (see col. 2, ll. 10-24). In
Examples 1-8 at col. 5, l. 51-col. 6, l. 8, Wideman discloses the
preparation of oxo carbon blacks from four types of carbon black
(A through D), two of which have DBP values within the scope of
the claims. Although the examiner has not advanced any specific
explanation or even cited the lines relied upon in Wideman
(Answer, page 3), it is apparent that the examiner is attempting
to combine the particle size of SAF carbon black with the DBP
values of carbon blacks A and D of the examples. However, the
examiner has not set forth any reasoning or explanation as to why
the disclosures set forth above from Wideman would amount to a
description of the claimed product under section 102(b), or why
the claimed subject matter would have been obvious to one of
ordinary skill in this art from these teachings of Wideman. In
other words, the examiner has not stated any reasoning or
explanation as to why one carbon black would have possessed the
properties of the separate carbon blacks disclosed by the Wideman
reference.
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