Appeal 2006-2186
Application 09/991,640
Claims 1-14 and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over US Patent 4,495,167 issued on January 22, 1985 to
Nauroth.1
Appellants state that claims 5, 10, 11, 13, and 14 each stand or fall
separately from claim 1 (Br. 3). To the extent that these claims are argued
separately, we consider them separately.
Substantially for the reasons advanced by the Examiner, we sustain
the rejection with regard to claims 1-4, 10-14, and 17. We, however, do not
sustain the rejection with regard to claims 5-9. Our reasons follow.
OPINION
Regarding claim 1, the Examiner has established a prima facie case of
obviousness over Nauroth. Nauroth discloses a precipitated silica having
properties within or overlapping the claimed ranges except for the
dibutylphthalate absorption number (DBP number) which is closely abutting
the claimed range (Nauroth: 380% versus Claim 1: greater than 380%).
There is also an example (Nauroth, Example 1) that describes a silica with a
380% DBP number, a number only infinitetesimally smaller than the lower
end of the claimed range of greater than 380%. The other examples as well
as the disclosure as a whole indicates that process parameters such as, for
instance, aging time, affect the DBP value (see Nauroth, Examples 1-5 and
Table 2). The process used to obtain the silica contains a number of
selections which must be made (temperature, pH, aging time, etc.) and one
1 The rejection of claims 15-16 under 35 U.S.C. § 103(a) and the rejection of
claims 1-4 and 10-17 under 35 U.S.C. § 112, ¶ 1 are presumed withdrawn as
they were not reproduced in the Answer and claims 15-16 have been
indicated as allowed.
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