Ex Parte Bice et al

Board of Patent Appeals and Interferences

Jan 29, 2004

09636311 (B.P.A.I. Jan. 29, 2004)

1 The procedure for determining the M1 Standard White Area
is described in the appellants’ specification (page 30, line 7 -
page 40, line 29).
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JO-ANN E. BICE, STUART D. HELLRING,
TIMOTHY A. OKEL and JAMES R. HAHN
___________
Appeal No. 2004-0448
Application No. 09/636,311
__________
ON BRIEF
__________
Before PAK, OWENS, and TIMM, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the final rejection of claims 1-17,
which are all of the claims in the application.
THE INVENTION
The appellants claim a method for making a hydrophobic
particulate inorganic oxide having a carbon content that is
substantially non-extractable and an M1 Standard White Area of
less than 0.4%.1 Claim 1 is illustrative:
Appeal No. 2004-0448
Application No. 09/636,311
2
1. In the method of producing a hydrophobic particulate
inorganic oxide by contacting an acidic aqueous suspension
of a particulate inorganic oxide selected from the group
consisting of precipitated silica, colloidal silica and
mixtures of such inorganic oxides, with an organometallic
compound to form an acidic aqueous suspension of hydrophobic
particulate inorganic oxide, optionally in the presence of a
surfactant and/or a water miscible solvent, and recovering
said hydrophobic particulate inorganic oxide, the
improvement comprises using said organometallic compound in
an amount sufficient to hydrophobize the inorganic oxide,
such that the inorganic oxide has a hydroxyl content of from
2 to 15 OH/nm2, a carbon content of from 0.1 to 6 weight
percent, and a methanol wettability of from 15 to 45
percent, in an aqueous suspension of inorganic oxide having
a pH of 2.5 or less, and treating the acidic aqueous
suspension of the hydrophobic particulate inorganic oxide
with acid neutralizing agents to produce a hydrophobic
particulate inorganic oxide having a pH of from 3 to 10, a
carbon content that is substantially non-extractable and an
M1 Standard White Area of less than 0.4 percent.
THE REFERENCES
Griffith et al. (Griffith) 5,908,660 Jun. 1, 1999
Lightsey et al. (Lightsey) 5,985,953 Nov. 16, 1999
Burns et al. (Burns) 6,051,672 Apr. 18, 2000
THE REJECTIONS
Claims 1-17 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Griffith in view of Lightsey and/or Burns.
OPINION
We reverse the aforementioned rejection. We need to address
only the sole independent claim, i.e., claim 1.
The appellants’ claim 1 requires that the hydrophobic
particulate inorganic oxide has an M1 Standard White Area of less
Appeal No. 2004-0448
Application No. 09/636,311
3
than 0.4%. The examiner argues that “[t]he same materials
treated in similar processes would be expected to exhibit similar
properties such as M1 standard white area” (answer, page 4).
The examiner has not provided any evidence or technical
reasoning which shows that the process in any of the relied-upon
references is sufficiently similar to that of the appellants that
there is a basis for reasonably believing that the hydrophobic
particulate inorganic oxide has an M1 Standard White Area of less
than 0.4%. Also, the examiner has not pointed out any disclosure
in the applied references which shows that the hydrophobic
particulate inorganic oxide has a high degree of dispersibility
in cured rubber compositions which, as pointed out by the
appellants (specification, page 3, lines 14-18; page 26,
lines 11-13), is characterized by a low M1 Standard White Area.
Nor has the examiner explained why the applied references would
have led one of ordinary skill in the art to obtain high
dispersibility in cured rubber compositions such that it
reasonably appears that the M1 Standard White Area is the same as
that of the appellants’ hydrophobic particulate inorganic oxide.
The examiner’s mere speculation is not sufficient for
showing inherency, see In re Oelrich, 666 F.2d 578, 581, 212 USPQ
323, 326 (CCPA 1981), or obviousness, see In re Warner, 379 F.2d
Appeal No. 2004-0448
Application No. 09/636,311
4
1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S.
1057 (1968), of a hydrophobic particulate inorganic oxide having
and M1 Standard White Area of less than 0.4%.
For the above reasons we reverse the examiner’s rejection.
DECISION
The rejection of claims 1-17 under 35 U.S.C. § 103 over
Griffith in view of Lightsey and/or Burns is reversed.
REVERSED
)
Chung K. Pak )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Terry J. Owens )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Catherine Timm )
Administrative Patent Judge )
TJO/eld
Appeal No. 2004-0448
Application No. 09/636,311
5
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