Appeal 2007-1639
Application 09/974,092
Claims 1-5 and 27 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Mendicino.
Mendicino describes a process for direct synthesis of trialkoxysilane
using a copper catalyst precursor, which Appellants agree is “similar” to the
claimed process (Appeal Br. 6), except for the requirement for a “copper
catalyst precursor having an average particle size in a range from about 30 to
about 60 nanometers” (Claim 1). According to the Examiner, “[t]he size of
the copper particles is similar to those claimed” (Answer 5), and “it would
have been prima facie obvious to use less than 100 nm particles because . . .
using 60 nm particles was well within the skilled artisan [sic]” (id. at 6).
The Examiner’s conclusory statement is insufficient to establish
obviousness. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness”); accord KSR International Co., v. Teleflex Inc., 127 S.Ct.
1727 (2007) (noting in order to facilitate review of the obviousness
determination, the “analysis should be made explicit.”).
The particle size of the copper catalyst precursor used in Mendicino’s
process “can be from less than 1 micron [1000 nanometers] up to about 100
microns [100,000 nanometers]” (Mendicino, col. 6, ll. 43-45), but no particle
size smaller than 100 nanometers is discussed, and Mendicino teaches that
“the preferred range [is] 0.1-30 microns [100-30,000 nanometers]” (id. at
col. 6, ll. 45-46). In addition, the size range for the copper catalyst precursor
used in Example 1 of Mendicino is given at 100-20,000 nanometers (id. at
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