Appeal No. 2002-0435 Page 3
Application No. 08/946,087
inadvertent error.
We also note that applicants' Appeal Brief is internally inconsistent. In the
section entitled "GROUPING OF THE CLAIMS," applicants state that all of the
appealed claims stand or fall together. Nevertheless, applicants argue dependent
claim 5 separately (Paper No. 20, paragraph bridging pages 5 and 6; and page 6, first
complete paragraph). On the particular facts of this case, we find that the specific
argument with respect to claim 5 "trumps" the pro forma grouping of the claims, and we
shall treat claim 5 separately from independent claim 1. However, we shall treat
dependent claims 3, 4, and 6 through 11 as standing or falling together with claim 1
because applicants expressly state that all claims stand or fall together and do not
argue any of those dependent claims separately.
Claim 1
Applicants argue that Stockburger fails to disclose or suggest the amount of
silica recited in claim 1, step (b). Applicants' argument, however, is predicated on the
incorrect premise that the lower end of the range recited in step (b) is 1% silica. In fact,
claim 1, step (b) provides
adding to the sorbitan ester solution from about 0.01 to about 10%
actives, based on the total weight of final crude ester product formed, of a
silica component [emphasis added].
Applicants' position to the contrary, notwithstanding, the lower limit of added silica in
claim 1 is from about 0.01% and not 1%.
As correctly found by the examiner, the amount of added silica disclosed by
Stockburger in Example 1, part B, is .41% which meets claim 1 on appeal. That is, the
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