Appeal 2007-1375
Application 10/327,300
Applying the preceding legal principles to the factual findings in the
record of this appeal, we determine that the Examiner has failed to establish
a prima facie case of anticipation or obviousness in view of the reference
evidence. Therefore we need not address Appellants’ evidence of
unobviousness, i.e., the Dong Declaration (Br. 8-9, 11-12; Reply Br. 6). See
In re Geiger, 815 F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir. 1987).
As shown by factual finding (2) listed above, Ye discloses a mean
particle size of 2.7 nm which is reasonably within the scope of “about 2.5
nanometers or less” as required by claim 33 on appeal (Answer 10).4
However, the Examiner has simply provided no reasonable basis for
interpreting the phrase “at least 10 wt.%” to read on the value of 5 wt.%
disclosed by Ye (id.). Contrary to the Examiner’s claim interpretation, claim
33 does not require an amount of “at least about 10%” (id., italics added).
Furthermore, we determine that the Examiner has not provided any facts
and/or technical reasons to support the assertion that the pore volume recited
in claim 33 on appeal would have been “inherent” to the aerogel of Ye (id.).
Making an assertion that the pore volume “is a property of conventionally
known aerogel materials” without any evidence or reasoning does not meet
the initial burden of the Examiner (id.).
For the foregoing reasons and those stated in the Brief and Reply
Brief, we reverse the Examiner’s rejection based on § 102(b) over Ye.
4 Appellants do not dispute this claim interpretation by the Examiner (see the
Brief and Reply Brief in their entirety).
7
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