Ex Parte Lindner et al

Patent Trial and Appeal Board

Dec 30, 2016

13263110 (P.T.A.B. Dec. 30, 2016)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/263,110 10/06/2011 Gottlieb-Georg Lindner 387453US99X PCT 5179
22850 7590 01/04/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
USELDING, JOHN E
ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
01/04/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patentdocket @ oblon. com
oblonpat @ oblon. com
ahudgens@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GOTTLIEB-GEORG LINDNER
and MICHAEL KEMPF
Appeal 2015-001029
Application 13/263,110
Technology Center 1700
Before ADRIENE LEPIANE HANLON, KAREN M. HASTINGS, and
GEORGE C. BEST, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1-3, 5-8, 16, and 17 of
Application 13/263,110 under 35 U.S.C. § 103(a) as obvious. Final Act.
(February 12, 2014). Appellants1 seek reversal of these rejections pursuant
to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
We heard oral argument in this appeal on December 9, 2016.
For the reasons set forth below, we REVERSE.
1 Evonik Degussa GmbH is identified as the real party in interest. Appeal
Br. 1.
Appeal 2015-001029
Application 13/263,110
BACKGROUND
The ’110 Application describes hydrophilic precipitated silicas which
are said to be well suited for use in silicone rubber formulations and methods
for their preparation and use. Spec. 1.
Claim 1 is representative of the ’110 Application’s claims and is
reproduced below from the Claims Appendix to the Appeal Brief:
1. A precipitated silica, having as physical properties:
a BET surface area of 185 to 260 m2/g;
a CTAB surface area of 100 to 160 m2/g;
a BET/CTAB ratio of 1.2 to 2.6;
a conductivity of from 1 to 250 (pS)/cm,
a median particle size dso of 8 to 25 pm, and
a tamped density of 50 to 140 g/1.
Appeal Br. 13.
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1-3, 5-8, 16, and 17 are rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Stenzel,2 Nauroth,3 and
Rausch.4 Final Act. 2.
2 US 2007/0059232 Al, published March 15, 2007.
3 US 4,857,289, issued August 15, 1989.
4 US 5,871,867, issued February 16, 1999.
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Appeal 2015-001029
Application 13/263,110
DISCUSSION
Appellants base their arguments for reversal of the appealed rejection
upon the limitations of claim 1, which is the only independent claim
remaining in the ’110 Application. We, therefore, limit our discussion to
claim 1. The remaining claims on appeal will stand or fall with claim 1.
The Examiner rejected claim 1 as unpatentable over the combination
of Stenzel, Nauroth, and Rausch. Final Act. 2. In particular, the Examiner
found that Stenzel describes a precipitated silica that meets every limitation
of claim 1 except for the tamped density. Id. Stenzel is silent regarding the
tamped density of its precipitated silica. The Examiner also found that
Rausch describes increasing the density of a precipitated silica to reduce
packing and freight costs. Id. (citing Rausch col. 3,11. 53-55). The
Examiner further found that Nauroth teaches that the tamped density can be
optimized by variation of the precipitation time and conditions and describes
precipitated silicas having tamped densities within the range recited in claim
1. Id. at 2-3.
Based upon these factual findings, the Examiner concluded that
It would have been obvious to one of ordinary skill in the
art at the time the invention was made to control the
precipitation time and conditions as taught by Nauroth et al. in
the production of the precipitated silica of Stenzel et al. to
optimize for a desired tamped density and to substantially
reduce the expenditure on packing material, packing chewing
operations, transportation and storage. Also, during processing,
the user benefits from relatively low volumes involved.
Id. at 3.
We reverse because the Examiner has not demonstrated that a person
of ordinary skill in the art at the time of the invention would have had a
reasonable expectation of success in arriving at the claimed precipitated
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Appeal 2015-001029
Application 13/263,110
silica. As the Examiner found, Stenzel describes a precipitated silica having
each of the properties recited in claim 1 except for the tamped density. The
Examiner, however, did not find Stenzel’s precipitated silica inherently
possessed the claimed tamped density. Rather, the Examiner found that
Nauroth describes a precipitated silica having a tamped density within the
claimed range, but which does not have the claimed BET surface area. Nor
does Nauroth describe any of the other properties recited in claim 1.
As Appellants argue, the combination of Stenzel, Nauroth, and
Rausch amounts to a mere invitation to experiment with the precipitation
conditions used to produce the silica. The Examiner does not explain how
this combination of references suggests modifying Stenzel’s precipitation
procedure so as to re-create the procedure described in the ’110
Application’s Specification or to produce a precipitated silica having the
properties set forth in claim 1 by some other method. Furthermore, the
Examiner has not provided any reason for a person having ordinary skill in
the art to desire a precipitated silica having a tamped density within the
range set forth in claim 1. While Rausch does describe the benefits of
increasing the tamped density of a silica, Rausch does not describe any
preferred range for the tamped density nor any limiting principle that would
suggest a stopping point for increasing the tamped density of the precipitated
silica.
Absent such guidance, a person having ordinary skill in the art at the
time of the invention could not reasonably be expected to combine Stenzel,
Nauroth, and Rausch to arrive at the claimed invention.
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Appeal 2015-001029
Application 13/263,110
CONCLUSION
For the reasons set forth above, we reverse.
REVERSED
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