Appeal 2006-2186
Application 09/991,640
of ordinary skill in the art would have selected those variables to optimize
the DBP number. Those silicas slightly outside the 340-380% range of
Nauroth would have been expected to perform similarly to the silica having
properties within the range.
Appellants allege that, as confirmed by Reference Example 1
reproduced in their specification (specification 6-7), the DBP absorption
number reported in Example 1 of Nauroth is incorrect. Appellants state that
the DBP number is actually 355 g/100g (Br. 3-4). Appellants further state in
the Brief that “to the best of their knowledge a DBP absorption value of at
least 380 g/100 g cannot be obtained by the process disclosed in Nauroth.”
(Br. 4). According to Appellant, Nauroth “does not enable one of ordinary
skill in the art how to obtain a DBP absorption value of as high as 380,” and
moreover, “there is no disclosed or suggested motivation to prepare a
precipitated silica having a DBP absorption value of even infinitesimally
greater than 380, but even if there was such motivation, [Nauroth] does not
disclose how to do so.” (Br. 4-5).
The first question raised by Appellants’ arguments is whether the
disclosure of Nauroth would have enabled the skilled artisan to make a silica
with a DBP number of 380%. References relied upon to support a rejection
under 35 U.S.C. § 103(a) must provide an enabling disclosure, i.e., they
must place the claimed invention in the possession of the public. In re
Payne, 606 F.2d 303, 315, 203 USPQ 245, 255 (CCPA 1979). Because
Nauroth specifically exemplifies a process in which silica with a DBP
number of 380% is obtained, Nauroth, prima facie, is enabled for this DBP
value. The burden, therefore, shifts to Appellants to show that, in fact, one
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