Appeal No. 2002-0435 Page 4
Application No. 08/946,087
range "from about 0.01 to about 10%" added silica in claim 1, step (b) "reads on"
Stockburger's .41% added silica.
There is no other readily identifiable difference between the process sought to be
patented in claim 1 and the process disclosed by Stockburger in Example 1, part B; and
no other difference is argued by applicants. On this record, therefore, we find that
claim 1 is anticipated by Stockburger within the meaning of 35 U.S.C. § 102(b). As
often stated by the Federal Circuit and its predecessor courts, lack of novelty in the
claimed subject matter is the "ultimate or epitome of obviousness." See Jones v.
Hardy, 727 F.2d 1524, 1529, 220 USPQ 1021, 1025 (Fed. Cir. 1984); In re Pearson,
494 F.2d 1399, 1402, 181 USPQ 641, 644 (CCPA 1974); In re May, 574 F.2d 1082,
1089, 197 USPQ 601, 607 (CCPA 1978). On this basis, we affirm the examiner's
rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over Stockburger.
As previously indicated, dependent claims 3, 4, and 6 through 11 fall together
with independent claim 1.
Claim 5
Applicants' claim 5 depends from claim 1 and requires that the silica be added to
the sorbitan ester solution at a temperature of from about 30°C to about 80°C, with
agitation. The Stockburger reference, in part B of Example 1, discloses that its
diatomaceous earth is added at a temperature of 101°C, which is well outside
applicants' claimed temperature range. Nor does Stockburger provide any guidance
which would have led a person having ordinary skill in the art to modify the teachings in
Example 1, part B, in a manner which would result in using applicants' claimed
temperature range. Accordingly, it is our judgment that Stockburger constitutes
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