Appeal No. 2005-0209
Application 09/274,014
Appellants have also not established unexpected results on the part of the claimed dense
mineral oxide solid supports encompassed by claims 1, 2 and 11 vis-à-vis the supports taught by
Girot based on a superior property or advantage. See generally, Geisler, 116 F.3d at 1470, 43
USPQ2d at 1365. Indeed, appellants have merely relied on the same “design and mechanism”
arguments that we discussed above.
Therefore, on this record, we find that one of ordinary skill in this art routinely following
the teachings of Girot would have arrived at porous silica solid matrix supports which abut or
fall within the range of dense mineral oxide solid supports wherein the pore volume is less than
30% of the total mass volume of the porous silica matrix encompassed by appealed claims 1, 2
and 11. See generally, Geisler, 116 F.3d at 1470, 43 USPQ2d at 1365; Merck & Co., Inc. v.
Biocraft Labs., Inc., 874 F.2d 804, 807, 10 USPQ2d 1843, 1845-46 (Fed. Cir. 1989).
Turning now to the ground of rejection based on the combined teachings of Girot and
Davis, the examiner finds that Girot does not disclose the pore volume % of the total volume
range for any mineral oxide matrix corresponding to the disclosed porous volume range of 0.2 to
about 2 cm3/ gram, taking the position that one of ordinary skill in the art working within Girot
would have established a workable or optimum range of pore volumes to increase density within
the range taught by the reference, citing Aller, 220 F.2d at 456, 105 USPQ at 235 (answer, pages
4 and 5-6). In this respect, the examiner finds that Girot discloses zirconium oxide, that is,
zirconia, as a porous solid matrix (col. 15, l. 43), and we agree with the examiner that one of
ordinary skill in the art would have been led by the reference to use this material with a pore
volume in the typical range of about 0.2 to about 2 cm3/gram (answer, pages 5 and 6-7). The
examiner further finds that Davis discloses zirconia “having porosities less than 30% (see Tables
II and III),” and with respect to claim 2, that “the density would intrinsically be in the claimed
ranges of 1.7-11 . . . if the porosity is less than <30% because zirconium oxide (which both
[Girot and Davis] disclose) has a density of 5.6,” citing the 59th Edition of the CRC Handbook of
Chemistry and Physics B-184 (answer, pages 4, 5 7 and 12; see Girot, col. 5, ll. 58-62, and col.
15, ll. 37-47). Thus, the examiner determines that it would have been obvious to one of ordinary
skill in the art to employ the zirconia matrices of Davis as the porous solid matrix in Girot (id.,
pages 5 and 6). With respect to claim 7, requiring a pore volume of 5% to 25%, which range
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