Appeal 2006-2186
Application 09/991,640
Appellants’ contention in the Brief that the value reported in Example
1 of Nauroth is incorrect is further thrown into doubt by another statement
within Appellants’ specification, namely, the last two lines on page 1. The
last two lines of page 1 state that “[s]ilicas with DBP absorption values of up
to [380g/100 g] are known as described in EP 0 078 909.”4
As a second matter, the statement 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” is merely attorney argument unsupported by
competent factual evidence. “Arguments of counsel unsupported by
competent factual evidence of record are entitled to little weight.” Payne,
606 F.2d at 315, 203 USPQ at 256.
With regard to Appellants’ argument that “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,” we find this
argument unpersuasive. Those of ordinary skill in the art would have
expected such silicas of slightly higher DBP value to behave similarly to
those at 380%. Nauroth does not state that such higher DBP values are
undesirable or unobtainable and in the face of the evidence as a whole it
would appear that values slightly higher than 380% are reasonably suggested
by Nauroth. Such values are within Appellants’ claimed range. Nor have
Appellants substantiated that such DBP values would not be obtainable by
4 We regard “g/110 g” as recited on page 1 and in Reference Example 1 as a
typographical error because EP 0 078 909 reports DBP values as
percentages, i.e, g/100 g, and Appellants report DBP values elsewhere in
g/100 g. Moreover, while Reference Example 1 recites the DBP number as
355 g/110 g, the Table on page 10 of the specification lists the same DBP
value of 355 in g/100 g.
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