Ex Parte Panz et alDownload PDFPatent Trial and Appeal BoardMar 27, 201712262684 (P.T.A.B. Mar. 27, 2017) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/262,684 10/31/2008 Christian Panz 332859US0X 6686 22850 7590 03/29/2017 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 EXAMINER MAYES, MELVIN C ART UNIT PAPER NUMBER 1732 NOTIFICATION DATE DELIVERY MODE 03/29/2017 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 tfarrell@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRISTIAN PANZ, HELGA OBLADEN, KARL MEIER, MARKUS RUF, RENE ALLERDISSE, DIETER KUHN, AZIZ EL MOUSSAOUI, MARIO SCHOLZ, and MICHAEL KEMPF Appeal 2015-002485 Application 12/262,684 Technology Center 1700 Heard: March 14, 2017 Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and JAMES C. HOUSEL, Administrative Patent Judges. HOUSEL, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellants1 appeal from the Examiner’s decision finally rejecting claims 1, 4—8, 24, and 25. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). 1 According to Appellants, the real party in interest is Evonik Degussa GmbH. Appeal Br. 2. Appeal 2015-002485 Application 12/262,684 We REVERSE.2 STATEMENT OF THE CASE The invention relates to sealants comprising storage-stable one component, room temperature vulcanizing (RTV-1K) silicone rubber and precipitated silicas with improved properties. Spec. 4:14—5:4. Appellants disclose that the precipitated silicas, due to their special structure and surface qualities, ensure high storage stability, a firm consistency, and an optimum yield point of the silicone rubber, especially of the RTV-1K type, without the need for a stabilizer. Id. at 5:5—9. Claim 24, reproduced below from the Claims Appendix to the Appeal Brief, is illustrative of the subject matter on appeal. 24. A sealant comprising: a one component room-temperature vulcanizing silicone rubber composition (RTV-1K); and a precipitated silica; wherein the precipitated silica has physiochemical properties comprising: an SiOHjsoiated absorbance ratio of from 1.5 to 10, a silanol group density of 1 to 3.0 SiOH/nm2, a modified tapped density of 1 to 50 g/1, and a pH of 3 to 5, wherein the pH is measured as a aqueous suspension of 5.00 g of the precipitated silica in 100 ml. of deionized water, and wherein the sealant is free of a stabilizer and is storage- stable for 35 days when stored at 50°C. REJECTIONS 2 Our decision refers to the Specification (Spec.) filed October 31, 2008, Appellants’ Appeal Brief (Appeal Br.) filed August 27, 2014, the Examiner’s Answer (Ans.) mailed October 8, 2014, and Appellants’ Reply Brief (Reply Br.) filed December 8, 2014. 2 Appeal 2015-002485 Application 12/262,684 The Examiner maintains, and Appellants request review of, the following grounds of rejection under 35 U.S.C. § 103(a): 1. Claims 1, 4—8, 24, and 25 as unpatentable over King3 in view of Esch;4 2. Claims 1, 4—8, 24, and 25 as unpatentable over King in view of Esch, and further in view of Kuhlmann5 and Panz;6 and 3. Claim 6 as unpatentable over King, Esch, Kuhlmann, and Panz, further in view of Waller.7 ANALYSIS Rejections 1 and 2: Obviousness over King in view of Esch alone, or further in view of Kuhlmann, and Panz The Examiner finds King teaches a storage stable sealant comprising RTV silicone rubber and precipitated silica free of stabilizers, but fails to teach the process of making the precipitated silica (and, therefore, apparently fails to teach the properties of the precipitated silica). Ans. 10, 12. The Examiner also finds Esch teaches a precipitated silica and the process for making the silica. Id. The Examiner concludes it would have been obvious to have made King’s precipitated silica using Esch’s process. Id. Because the Examiner finds Esch’s process is substantially the same or similar to Appellants’ disclosed process, the Examiner determines that Esch’s precipitated silica is also substantially the same or similar to Appellants’ 3 US 5,276,123, issued January 4, 1994. 4 US 6,977,065 Bl, issued December 20, 2005; hereinafter “Esch”. 5 US 2002/0102198 Al, published August 1, 2002; hereinafter “Kuhlmann”. 6 US 2005/0191228 Al, published September 1, 2005; hereinafter “Panz”. 7 US 6,201,038 Bl, issued March 13, 2001; hereinafter “Waller”. 3 Appeal 2015-002485 Application 12/262,684 precipitated silica, i.e., that Esch’s precipitated silica necessarily possesses the properties of Appellants’ claims within the ranges recited therein. Id. at 10—11, 12—13, comparing Esch || 73—85, Exs. 1—3 with Spec. 9. The Examiner finds Esch teaches a silanol group density of 3—9.5 ml/(1.5 g) that overlaps the claimed range and concludes, therefore, that the claimed range would have been obvious. Final Act. 13, citing MPEP 2144.05. In addition, the Examiner finds Esch’s precipitated silica necessarily possesses an SiOH isolated absorbance ratio of greater than 1.5 because Esch’s precipitated silica is the same as Appellants’ and has an equivalent silanol group density. Id. However, in spite of finding Esch’s precipitated silica is the same as Appellants’, the Examiner finds that Esch is silent as to the silica’s modified tap density and pH. Id. For these properties, the Examiner finds Kuhlmann teaches a precipitated silica having a pH (5% in water) of 3—8 and Panz teaches a precipitated silica having a modified tap density of less than 70 g/1. Id., again citing MPEP 2144.05. The Examiner concludes that it would have been obvious to make Esch’s precipitated silicas having a pH of 3—5 and a tap density of less than 70 g/1 because such properties are desirable for high structure and filler uses. Id. at 13—14. Appellants contend that the Examiner’s inherency finding with regard to the recited properties of the precipitated silica in the claims based on the Examiner’s finding that Esch’s process for making the precipitated silica is substantially the same or similar to Appellants’ is erroneous. Appeal Br. 17. In particular, Appellants urge that Esch fails to teach adding an acidifier after the drying of the silica which is disclosed in Appellants’ process. Id. In addition, Appellants assert that although each of Esch, Kuhlmann, and 4 Appeal 2015-002485 Application 12/262,684 Panz individually teach a property of the claims, they teach other properties that are outside of those recited in the claims. Id. Appellants assert that Esch’s silanol group density is a different property from Appellants’; that Kuhlmann’s tapped density is different from Appellants’; and that Panz’ pH is greater than Appellants’. Id. at 18. Appellants argue that the ordinary artisan would recognize that these properties are not independently determined and would have been technically difficult to achieve. Id. at 19. Appellants’ arguments are persuasive of reversible error. Although the Examiner finds Esch’s sulfuric acid “is considered an acidifier” as used in Appellants’ process, as Appellants correctly contend (Reply Br. 1), Esch does not have an acidification step after the step of drying the precipitated silica. As such, Esch does not acidity the silica after drying and, therefore, is not the same process as Appellants disclose.8 See Spec. 9:1—11 and 32:9— 30. In addition, though the Examiner finds that each of Esch, Kuhlmann, and Panz teach various properties in common with those recited in the claims, the Examiner fails to explain how one of ordinary skill in the art would achieve all of the properties recited in the claim in a single precipitated silica product, especially where these references teach other properties that are not within the ranges recited in the claims. KSR Int 7 Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (“a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”) Under these circumstances, we cannot conclude that the Examiner has met the minimum threshold of establishing obviousness under 35 U.S.C. 8 We note that Appellants do not argue nor demonstrate any other difference between Esch’s and Appellants’ processes. 5 Appeal 2015-002485 Application 12/262,684 § 103(a). See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); KSRInt’l Co., 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Accordingly, we do not sustain the Examiner’s prior art rejections of claims 1, 4—8, 24, and 25 under 35 U.S.C. § 103(a) over the combination of King in view of Esch alone, or further in view of Kuhlmann and Panz, for the reasons given above and presented by Appellants. Rejection 3: Obviousness over King, Esch, Kuhlmann, and Panz, and further in view of Waller The Examiner adds Waller to address the limitations of dependent claim 6, and not to address the deficiencies in the combination of King, Esch, Kuhlmann, and Panz discussed above. Accordingly, for the same reasons as given above, we do not sustain the Examiner’s § 103 rejection of claim 6. DECISION Upon consideration of the record, and for the reasons given above and in the Appeal and Reply Briefs, the decision of the Examiner rejecting claims 1, 4—8, 24, and 25 under 35 U.S.C. § 103(a) as unpatentable over King in view of Esch alone, or further in view of Kuhlmann, Panz, and Waller, is reversed. REVERSED 6 Copy with citationCopy as parenthetical citation