Appeal 2007-1895
Application 10/719,489
by transferring the mixture to a cooling apparatus rather than halting the
mixing process (which requires heating) to initiate cooling,” and thus, “the
difference between the example in [Bilgrien] and the instant claims [is]
obvious” (id. 4). The Examiner finds the polysiloxane materials as claimed
in claim 1 and as disclosed in Bilgrien and Boudreau overlap (id. 7).
Appellants argue that the claimed process is not the result of merely
converting Bilgrien’s batch process into a continuous process on the basis
that Boudreau evinces a continuous process was known in the art,
contending that the facts of the present appeal are different than those in
In re Dilnot, 319 F.2d 188, 193-94, 138 USPQ 248, 252 (CCPA 1963), and
that Bilgrien and Boudreau have been improperly combined (Br. 10).
Appellants contend that in Dilnot, the prior art gradually delivered a
measured amount of a material as a batch into a mixture and the claim
required “continuously introducing” the material, arguing “there was no
criticality to continuously introducing the foam into the cementitious slurry”
(Br. 11; Reply Br. 3-4). Thus, Appellants contend “the obviousness of
‘making continuous’ . . . is only meant to address the differences between
performing an old step or steps all at once as opposed to extending the
performance of those steps over time to make the process continuous, when
such difference is not critical to the invention” (Br. 11; original emphasis
omitted; Reply Br. 3-4). Appellants contend that appealed claim 1 does not
“claim the same steps as disclosed in [Bilgrien] modified so as to make the
process continuous . . . required to establish obviousness” under Dilnot
because of the limitation “directly transferring the flowable
organopolysiloxane powder composition to a bulk solids cooling device and
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