Appeal No. 2001-1668
Application 09/036,754
We are of the opinion that one of ordinary skill in this art would have reasonably inferred
from Fleming that the formic acid ester or other ester will hydrolyze to the corresponding acid
when added to the aqueous medium, thus lowering the pH to that taught.2 This person would
also have reasonably known that the extent of hydrolysis of formic acid esters and other esters in
a highly alkaline aqueous medium is temperature dependent. Accordingly, we are of the view
that, prima facie, Fleming would have disclosed each and every step of the claimed process of
producing a ceramic green part to one of ordinary skill in this art at the time the invention was
made.
However, the examiner further cites Bennett to show that it was known to use in silica
sol/gel processes a “latent gelling agent . . . selected from pH-adjusting agents that hydrolyze or
decompose thermally to release an acid or consume a base, e.g., hydrolysable esters” (col. 6, lines
3-10). Bennett would have taught one of ordinary skill in the art that gelation can be delayed
using “a latent gelling agent” and teaches a number of compounds which can thermally
decompose in addition to hydrolyzable esters (col. 5, line 21-49).
Based on the substantial evidence in Fleming and Bennett, we agree with the examiner
that, prima facie, one of ordinary skill in this art would have been motivated by the teachings of
the combination of references to form an alkaline aqueous medium containing silica, a quaternary
ammonium hydroxide base, and a hydrolyzable ester, such as a formic acid ester, mixing and
degassing the medium, molding the medium, allowing gelation to proceed and demolding and
drying the thus formed wet porous tube, in the reasonably expectation that the ceramic green part
thus formed can be sintered. Thus, prima facie, one of ordinary skill in this art routinely
following the combined teachings of Fleming and Bennett would have reasonably arrived at the
claimed process of preparing a ceramic green part encompassed by appealed claim 36 without
recourse to appellants’ specification. See, e.g., In re Gorman, 933 F.2d 982, 986-87, 18 USPQ2d
1885, 1888-89 (Fed. Cir. 1991) (“The extent to which such suggestion [to select elements of
2 It is well settled that a reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in this art would have reasonably been expected to draw
therefrom, see generally, In re Fritch, 972 F.2d 1260, 1264-65, 23 USPQ2d 1780, 1782-83 (Fed.
Cir. 1992); presuming skill on the part of this person. In re Sovish, 769 F.2d 738, 743, 226
USPQ 771, 774 (Fed. Cir. 1985).
- 4 -
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007