10247330 (B.P.A.I. Apr. 9, 2010)

Ex Parte Blume et al

Board of Patent Appeals and InterferencesApr 9, 2010

10247330 (B.P.A.I. Apr. 9, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ANKE BLUME, STEFAN UHRIANDT, RALF SCHMOLL, DETLEF LUGINSLAND, and HERBERT THOMA ____________ Appeal 2009-013160 Application 10/247,330 Technology Center 1700 ____________ Decided: April 9, 2010 ____________ Before EDWARD C. KIMLIN, CHUNG K. PAK, and PETER F. KRATZ, Administrative Patent Judges. KIMLIN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal from the final rejection of claims 1, 4-7, 17-21 and 23. Claims 8-16 have been withdrawn from consideration. Claim 1 is illustrative: 1. A precipitated silica having a Appeal 2009-013160 Application 10/247,330 2 BET surface area ranging from 292 to 600 m2/g CTAB surface area ranging from 100 to 200 m2/g wherein the BET/CTAB surface area ratio is ≥ 2.05. The Examiner does not cite prior art in the rejection of the appealed claims. Appellants’ claimed invention is directed to a precipitated silica having a BET surface area, CTAB surface area and BET/CTAB surface area ratio within the claimed ranges. Appealed claims 1, 4-7 and 17-21 stand rejected under 35 U.S.C. § 112, first paragraph, written description requirement. Claims 1, 4-7, 17-21 and 23 stand rejected under 35 U.S.C. § 112, first paragraph, enablement requirement. In addition, claims 1, 4-7, 17-21 and 23 stand provisionally rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1, 2, 4-7 and 17-21 of copending application, U.S. Serial No. 11/058, 293.1 We have thoroughly reviewed the respective positions advanced by Appellants and the Examiner. In so doing, we find that the Examiner’s rejection under § 112, first paragraph, are not sustainable. We will, however, sustain the Examiner’s obviousness-type double patenting rejection. We consider first the Examiner’s rejection under § 112, first paragraph, written description requirement. It is the Examiner’s position “a combination of the recited BET and CTAB surface areas with the recited 1 The Examiner has withdrawn the obviousness-type double patenting rejections based on U.S. Serial Nos. 10/523,414, 10/523,029 and 10/522,672. Appeal 2009-013160 Application 10/247,330 3 ratio have no support in the originally filed specification” (Ans. 4, third para.). The Examiner explains that even though the table shown at paragraph [0010] shows different precipitated silica having values within the claimed ranges “they are related to different silica” (id.). The Examiner continues that “[m]ixing and choosing BET surface areas, CTAB surface areas and ratios thereof from different silica would be improper” (id.). To be sure, Appellants’ specification table relates to different precipitated silica, but this does not negate the fact that seven examples of the silica have BET, CTAB and BET/CTAB ratios that fall within the claimed ranges. As pointed out by Appellants, one of the silica has a BET surface area at the lower limit of the claimed range, while another silica has a BET surface area at the upper limit of the claimed range. Also, two of the precipitated silica have CTAB surface areas at the upper limit of the claimed range and one of the silica has a CTAB surface area at the lower limit of the claimed range. All seven of these silica have a BET/CTAB ratio within the claimed range, which upper limit is set by the upper limit of the BET surface area and lower limit of the CTAB surface area. Hence, based on these seven examples, we are persuaded that Appellants’ original written specification would have reasonably conveyed to one of ordinary skill in the art that Appellants had within their possession, at the time of filing the present application, the concept of precipitated silica having surface areas within the claimed ranges. We note that our decision in the prior appeal of this application was based on a different set of facts than those presently before us, i.e., the claimed ranges in the prior appeal were considerably broader in scope than those in the instant appeal. Appeal 2009-013160 Application 10/247,330 4 Concerning the rejection under § 112, first paragraph, enablement requirement, the Examiner’s rationale is essentially the same as the one put forth in the rejection under § 112, first paragraph, written description requirement. The Examiner errs in stating that “[n]ew matter also means non-enablement …” (Ans. 5, first full para.). Although the Examiner states that “[t]here is no evidence that applicant had obtained a precipitated silica having the recited properties” (Ans. 5, second full para.), Appellants’ specification evidences that seven examples of precipitated silica have surface area values falling within the claimed ranges. Appellants correctly point out that the Examiner has not met the initial burden of demonstrating that one of ordinary skill in the art would have to resort to undue experimentation to make precipitated silica falling within the claimed ranges, particularly in light of the method for preparing the same disclosed in the specification. The Examiner’s assertion of “undue experimentation” has no factual support. Also, while claim 23 places no additional upper limits on the BET and CTAB surface areas, the surface area upper limits set forth in claim 1 apply to dependent claim 23. Moreover, it is well settled that claims are not to be read to include inoperable embodiments, i.e., it is not the function of the claims to specifically exclude possible inoperable embodiments. In re Dinh-Nguyen, 492 F.2d 856, 858-59 (CCPA 1974); In re Anderson, 471 F.2 1237, 1242 (CCPA 1973); In re Kamal, 398 F.2d 867, 872 (CCPA 1968). Appellants have not presented a substantive argument against the Examiner’s obviousness-type double patenting rejection but request that the rejection be held “in abeyance until the present claims are found to be allowable but for this rejection or the copending application has been Appeal 2009-013160 Application 10/247,330 5 patented” (Prin. Br. 7, first para.). Consequently, we will sustain the rejection, pro forma. In conclusion, based on the foregoing, the Examiner’s rejections under 35 U.S.C. § 112, first paragraph, are reversed. The Examiner’s obviousness-type double patenting rejection against all the appealed claims is affirmed. Accordingly, the Examiner’s decision rejecting the appealed claims is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(v). AFFIRMED kmm OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314