Appeal 2006-2186
Application 09/991,640
one of ordinary skill in the upon routine experimentation in order to
optimize the characteristics, including high DBP values, of precipitated
silicas obtained based on the disclosure of Nauroth and given the level of
skill of such an ordinary artisan.
With respect to claims 10, 11, 13, and 14, Appellants’ arguments are
not persuasive because they merely state that the reference does not teach or
suggest what is recited in the claim without addressing the findings of the
Examiner.
Turning to claim 5, we are in agreement with Appellants that the
Examiner has not established a prima facie case of obviousness with respect
to the subject matter of this claim. Specifically, claim 5 requires a step of
adding water and sulfuric acid and conducting the process such that a solids
content of 36 to 42 g/l remains. Nauroth states that the precipitated silica of
the disclosed properties is obtained by a process in which a silica final
concentration of 46 g/l is established (Nauroth, col. 21-22; col. 4, ll. 24-25).
The Examiner relies upon the recitation of “about 46 g/l” in claim 4 of
Nauroth to support a finding that Nauroth would suggest a range of
acceptable values at least including 42 g/l to one of ordinary skill in the art.
Given that the only value disclosed in the portion of the patent teaching how
to make and use the precipitated silica is 46 g/l, we cannot agree that
Nauroth supports this finding of the Examiner.
We conclude that the Examiner failed to establish a prima facie case
of obviousness with respect to the subject matter of claims 5-9.
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