Ex Parte Easter et al

Patent Trial and Appeal Board

Apr 23, 2013

11655144 (P.T.A.B. Apr. 23, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/655,144 01/19/2007 Mark R. Easter 105967-00691 8412
27557 7590 04/24/2013
BLANK ROME LLP
WATERGATE
600 NEW HAMPSHIRE AVENUE, N.W.
WASHINGTON, DC 20037
EXAMINER
LACLAIR LYNX, DARCY DANIELLE
ART UNIT PAPER NUMBER
1763
MAIL DATE DELIVERY MODE
04/24/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GENERAL CABLE TECHNOLOGY CORPORATION
Inventors: Mark R. Easter and Gregg Szylakowski
____________________

Appeal 2012-002293
Application 11/655,144
Technology Center 1700
____________________

Before FRED E. McKELVEY, SALLY GARDNER LANE, and
DONNA M. PRAISS, Administrative Patent Judges.

McKELVEY, Administrative Patent Judge.

DECISION ON APPEAL

Statement of the case 1
General Cable Technology Corporation (“applicant”), the real party in 2
interest (Brief, page 3), seeks review under 35 U.S.C. § 134(a) of a final rejection 3
dated 21 July 2010. 4
The application was filed in the USPTO on 19 January 2007. 5
The application on appeal claims priority of Provisional Application 6
60/760,385, filed 20 January 2006. 7
The application has been published as U.S. Patent Application Publication 8
2009/0036588 A1. 9

Appeal 2012-002293
Application 11/655,144

2

In support of prior art rejections, the Examiner relies on the following 1
evidence. 2
Christie U.S. Patent 3,865,778 11 Feb. 1975
Chevallier U.S. Patent 6,001,322 14 Dec. 1999
Gornowicz et al.
“Gornowicz”
U.S. Patent Application Publication
2003/0109623 A1
12 Jun. 2003
Vachon1 U.S. Patent Application Publication
2003/0166777 A1
04 Sep. 2003

Applicant does not contest the prior art status of the evidence relied upon by 3
the Examiner, all of which is prior art under 35 U.S.C. § 102(b). 4
Applicant mentions the following evidence. 5
Easter et al.
“Easter”
U.S. Patent Application Publication
2009/0036588 A1—which is the published
version of the application on appeal

5 Feb. 2009

We mention the following additional evidence (copy attached) in this 6
opinion. 7

Wikipedia
Fumed silica, Precipitated silica and
Nanocrystalline silicon (microcrystalline
silicon)
Downloaded from
the Internet on
16 April 2013

We have jurisdiction under 35 U.S.C. § 134(a). 8
Claims on appeal 9

1 While listed in the Answer (page 4), insofar as we can tell neither applicant nor
the Examiner otherwise discuss Vachon. We have not found it necessary to
consider Vachon.

Appeal 2012-002293
Application 11/655,144

3

Claims 1, 3-11, and 13-20 are on appeal. Brief, page 5; Answer, page 3. 1
Claim 1, which we reproduce from the Claim Appendix of the Brief 2
(page 19), reads [matter in brackets and indentation added (see 37 CFR § 1.75(i)); 3
principal limitations in issue in italics]: 4
An abrasion resistant silicone rubber composition comprising: 5
(a) a silicone base rubber, and 6
(b) an additive selected from the group consisting of 7
[1] precipitated silica, 8
[2] a blend of precipitated silica and fumed silica; 9
[3] a blend of microcrystalline silica and fumed silica 10
and 11
[4] a blend of precipitated silica and microcrystalline 12
silica; 13
wherein said precipitated silica has a surface area from about 30 m2g 14
to about 250 m2g. 15
We interpret “30 m2g” and “250 m2g” to mean respectively “30 square 16
meters per gram” and “250 square meters per gram”. 17
Claim 1 does not specify a surface area limitation for option [3]—a 18
combination of a silicone base rubber and a blend of microcrystalline silica and 19
fumed silica. 20
Rejections 21
Rejection 1: Claims 1 and 3-9 stand rejected under § 103 over Christie and 22
Chevallier. Answer, page 4. 23

Appeal 2012-002293
Application 11/655,144

4

Rejection 2: Claims 10-11, 13-18, and 20 stand rejected under § 103 over 1
Christie, Chevallier, and Gornowicz. Answer, page 6. 2
Rejection 3: Claim 19 stands rejected under § 103 over Christie, Chevallier, 3
Gornowicz, and Admitted Prior Art. Answer, page 9. 4
In presenting the appeal, applicant argues all the claims as a group and does 5
not present separate arguments for Rejections 2 and 3. Accordingly, we will 6
decide the appeal on the basis of Claim 1. 37 C.F.R. § 41.37(c)(1)(vii). 7
Analysis 8
Background 9
Silica particles have been used to improve properties of silicone rubber. 10
According to applicant, “[i]t is known to add fumed silica to silicone rubber 11
to improve tensile and tear strength.” Specification, ¶ 0013.2 12
Christie reveals that fumed silica, precipitated silica and mixtures thereof 13
likewise have been described as useful in silicone rubber to render the rubber 14
resistant to degradation by engine oil and hydrocarbon oils. Col. 1:6-11 and 15
col. 2:35-44. 16
Chevallier confirms that precipitated silica having applicant’s claimed 17
surface area is known to be useful as reinforcing fillers for elastomers. 18
Col. 1:12-16; col. 4:37-38; col. 8:31-36. 19
Claim 1 refers to precipitated silica, fumed silica and microcrystalline silica. 20

2 In the Brief (page 11), applicant refers to the published version of the
Specification. We likewise refer to the paragraphs of the published version of the
Specification: U.S. Patent Application Publication 2009/0036588 (Easter).

Appeal 2012-002293
Application 11/655,144

5

According to applicant, fumed silica can cost up to 20 times as much as 1
microcrystalline silica. Specification, ¶ 0013. 2
Precipitated silica is said to cost “only 50% more than microcrystalline 3
silica.” Specification, ¶ 0023. 4
The relative costs of the three silicas can be represented as follows: 5
Silica Relative cost vis-à-vis microcrystalline silica
Fumed silica Up to 20
Precipitated silica 1.5
Microcrystalline silica 1

Fumed silica is a commercial product. Specification, ¶¶ 0034 and 0035. 6
According to Wikipedia, “fumed silica is made from flame pyrolysis of silicon 7
tetrachloride . . . vaporized in a 3000 ºC electric arc. Major global producers . . . 8
[include] Evonik (who sells it under the name Aerosil®) . . . [and] Cabot Corp. 9
(Cab-O-Sil®) . . . .” (Copy attached) According to the Specification, Cab-O-Sil® 10
LM150 has a surface area of 160 m2/g. Id. at ¶ 0035. Further according to the 11
Specification, Aerosil 972 has a surface area of 170 m2/g. Id. at 0034. 12
Precipitated silica is also a commercial product. Specification, ¶¶ 0032 13
and 0033. According to Wikipedia, precipitated silica is produced by precipitation. 14
The Specification reveals that precipitated silica is sold by Degussa as Sipernat 160 15
(surface area 165 m2/g) and Sipernat 120 (surface area 125 m2/g). Id. 16
Microcrystalline silica is also a commercial product. Specification, ¶ 0031. 17
According to Wikipedia, microcrystalline silica (a/k/a “nanocrystalline silicon”) is 18
a form of porous silica. The Specification reveals that microcrystalline silica is 19
sold by Unimin Specialties as Imsil A10 having a surface area of 6.1 m2/g. Id. 20

Appeal 2012-002293
Application 11/655,144

6

Scope and content of Christie 1
Claim 1 covers four embodiments each comprising two elements: one 2
element is silicone base rubber (a) and the other element is silica (b), where (b) is 3
listed as four alternatives. 4
Relevant to Claim 1, Christie describes the use of fumed silica, precipitated 5
silica or mixtures thereof in combination with silicone elastomers. See Abstract; 6
col. 2:35-44. Use of silicas in combination certain inorganic fillers and magnesium 7
oxide is said to result in silicone rubber elastomers which are “highly resistant to 8
degradation by used engine oil . . . .” Col. 2:42-43. 9
Use of precipitated silica meets Claim 1 embodiment (b)[1]. Use of a 10
mixture of precipitated and fumed silica meets Claim 1 embodiment (b)[2]. 11
Difference 12
Claim 1 calls for a surface area of from about 30 m2/g to about 13
250 m2/g. We will assume that the surface area is a BET surface area. See 14
Specification, ¶ 0022. Applicant does not refer in the Specification to CTAB 15
surface areas. 16
The difference between the subject matter of Claim 1 and Christie is that 17
Christie does not explicitly describe the surface area of the precipitated silica. 18
Answer, page 4. 19
Discussion 20
It is readily apparent that commercial precipitated silica having surface areas 21
within the range of those of Claim 1 was available to those skilled in the art. 22
Chevallier also describes precipitated silica having a BET surface area 23
ranging from 100 to 200 m2/g. Abstract. Silica P3 is described as having a BET 24

Appeal 2012-002293
Application 11/655,144

7

specific surface area of 137 m2/g. Col. 10:65. P4 and P5 are said to have a surface 1
areas of 136 m2/g and 160 m2/g, respectively. Col. 11:64 and col. 12:66. 2
The record reveals that as of the time of the invention, applicant used 3
commercially available precipitated silica having the surface area specified in 4
Claim 1. 5
Use of precipitated silica alone (Claim 1 embodiment (b)[1]) would have 6
been of interest to one skilled in the art given the relative cost of precipitated silica 7
vis-à-vis fumed silica. Market demand, e.g., maximizing profits, is a strong 8
incentive for those skilled in the art to use a cheaper silica in a known combination 9
of a silica and a silicone elastomer. 10
While applicant suggests that the Examiner’s combination of Christie and 11
Chevallier “is weak” (Brief, page 11), nowhere does applicant offer a suggestion as 12
to what surface area one skilled in the art would have used in practicing the 13
Christie invention. One skilled in the art would have known that the Christie silica 14
has a surface area. The commercial products mentioned in the Specification and 15
Chevallier confirm that precipitated silica with the claimed surface area were 16
known. It would seem to follow that one skilled in the art would have had a reason 17
when practicing the Christie invention to use the known precipitated silica.3 18
Unexpected results 19

3 While it is not necessary for our decision in this case, there would seem to be a
commercial reason for using a combination of microcrystalline silica and fumed
silica. Fumed silica costs as much as 20 times more than microcrystalline silica.
In the event of further prosecution, applicant and the Examiner may wish to
address, based on cost alone, why it would not have been obvious to use a mixture
of microcrystalline silica with fumed silica with the view to lowering overall cost.

Appeal 2012-002293
Application 11/655,144

8

Applicant’s principal argument on appeal seems to be that the record 1
supports a finding of unexpected results. Applicant calls our attention to data in 2
Table III and Table IV of the Specification. Brief, page 11.4 3
The Examiner declined to credit applicant’s showing of alleged unexpected 4
results. One reason given was that applicant did not compare the compositions of 5
Claim 1 with those of Christie. Answer, page 15. 6
Applicant has not given us a detailed explanation of why one skilled in the 7
art would find the data persuasive as establishing an unexpected result. The 8
unexpected result apparently is improved abrasion resistance. 9
We understand Table III to show abrasion resistance of silicone rubber 10
compositions within the scope of the invention (Examples 1-7). We understand 11
Table IV to show abrasion resistance of comparative silicon rubber compositions 12
outside the scope of the invention. 13
Bearing in mind that Christie describes the use of fumed silica, precipitated 14
silica and mixtures thereof to which any comparison should be made, Table III 15
describes the following: 16
Reproduction of portions of Table III
Ingredient Surface area Example 1 Example 2
Silicone base resin 100 100
Sipernat 120
(precipitated silica)
125 m2/g 22
Sipernat 160 m2/g 22
Abrasion resistance5 3021 5144

4 The Brief makes reference to an Amendment filed on 4 December 2010. We
believe applicant intended to refer to the Amendment filed on 4 December 2009.

Appeal 2012-002293
Application 11/655,144

9

Table IV describes data based on comparative Examples A through J for 1
compositions comprising a combination of (1) 100 parts of a silicone base resin 2
and (2) 100 parts of Imsil A10—a microcrystalline silica having a surface area of 3
6.1 m2/g. The abrasion resistance is reported as follows: 4
Reproduction of portions of Table IV
Example A B C D E F G H I J
Abrasion
resistance
354 329 377 767 1342 2763 519 428 1750 1831

On the basis of the data reproduced above, applicant maintains that it’s 5
claimed compositions produce an unexpected result. 6
In evaluating the data, we note that applicant’s Table III data is limited to 7
precipitated silica having a surface area of 125 m2/g or 160 m2/g. Claim 1 calls for 8
a surface area range of 30 m2/g or 250 m2/g, as well as an additive made up of both 9
precipitated silica and fumed silica. No Table III data reports results of 10
experiments based on the use of a combination of precipitated silica and fumed 11
silica—also described by Christie. 12
As the Examiner noted, a comparison should be between the claimed 13
invention and the closest prior art. Answer, page 13. The closest prior art is 14
Christie. No numerical surface area values are reported by Christie. It would 15

5 We assume that abrasion resistance was determined in accordance with
ASTM D1630. Specification, ¶ 0030. A copy of the ASTM has not been found in
the record. In the event of further prosecution, a copy of the ASTM test should be
made of record.

Appeal 2012-002293
Application 11/655,144

10

appear that a possible convincing comparison at minimum would establish 1
abrasion resistance for silicone rubber/precipitated silica compositions having 2
surface area outside the claimed range vis-à-vis those having surface area inside 3
the claimed range. The purpose would be to establish that the claimed range is 4
critical and produces an unexpected result. In addition, we note that apart from 5
Claims 7 and 16 (abrasion resistance of 1000) and 8 and 17 (abrasion resistance of 6
1500) and claim 18 (which depends from claim 17), the claims do not recite the 7
alleged new function which applicant says it has achieved. The showing in Table 8
III and Table IV manifestly is not commensurate in scope with the breadth of the 9
claims. Moreover, based on the data in Table IV, it is apparent that an abrasion 10
resistance of 1000 or 1500 is less than abrasion resistances of Comparative 11
Examples F (2763), I (1750) and J (1831). It is difficult to find on this record that 12
applicant has discovered a new abrasion resistance property. 13
In the Reply, applicant refers to a chart prepared by the Examiner comparing 14
tensile strength, elongation, tear strength and specific gravity of Christie products 15
vis-à-vis similar properties reported in the Specification for compositions 16
presumably within the scope of applicant’s claims. Reply, page 4. Applicant goes 17
on to explain why it believes the Examiner’s use of those properties undermines 18
the rejection. The claims on appeal do not refer to those properties in combination 19
with specific abrasion resistance properties. Accordingly, a comparison of those 20
properties would not appear to be controlling in this case. 21
Applicant has not explained why the data of Table III and Table IV establish 22
an unexpected result of the subject matter as broadly claimed. Missing from 23
applicant’s analysis is why one skilled in the art would not have found it obvious to 24

Appeal 2012-002293
Application 11/655,144

11

use known precipitated silica in the process described by Christie to achieve the 1
result described Christie. The prior art renders obvious subject matter within “the 2
objective reach of the claims” and therefore the subject matter of the claims 3
includes subject matter which would have been obvious. KSR Int’l Co. v. Teleflex, 4
Inc., 550 U.S 398, 419 (2007). 5
Other arguments 6
We have considered applicant’s remaining arguments and find none that 7
warrant reversal of the Examiner’s rejections. Cf. In re Antor Media Corp., 8
689 F.3d 1282, 1294 (Fed. Cir. 2012). 9
Decision 10
Upon consideration of the appeal, and for the reasons given herein, it is 11
ORDERED that the decision of the Examiner rejecting the claims on 12
appeal over the prior art is affirmed. 13
FURTHER ORDERED that no time period for taking any 14
subsequent action in connection with this appeal may be extended under 37 CFR 15
§ 1.136(a)(1)(iv). 16
AFFIRMED 17
cc: Wikipedia article 18
19
cam 20
Fumed silica - Wikipedia, the free encyclopedia Page 1 of 1
Fumed silica

From Wikipedia, the free encyclopedia
Fumed silica, also known as pyrogenic silica
because it is produced in a flame, consists of
microscopic droplets of amorphous silica fused into
branched, chainlike, three-dimensional secondary
particles which then agglomerate into tertiary
particles. The resulting powder has an extremely low
bulk density and high surface area. Its three­
dimensional structure results in viscosity-increasing,
thixotropic behavior when used as a thickener or
reinforcing filler.
Contents
• 1 Properties
• 2 Production
• 3 Applications
• 4 Health issues
• 5 See also
• 6 References
Properties
Fumed silica has a very strong thickening effect. Primary particle size is 5-50 nrn. The particles are non­
porous and have a surface area of 50-600 m 2/g. Density 160-190 kg/m3.
Production
Fumed silica is made from flame pyrolysis of silicon tetrachloride or from quartz sand vaporized in a
3000°C electric arcYl Major global producers are Evonik (who sells it under the name Aerosil®), Cabot
Corporation (Cab-O-Si1®), Wacker Chemie-Dow Coming, and OCI (Konasil®).
Applications
Fumed silica serves as a universal thickening agent and an anticaking agent (free-flow agent) in
powders. Like silica gel, it serves as a desiccant. It is used in cosmetics for its light-diffusing properties.
It is used as a light abrasive, in products like toothpaste. Other uses include filler in silicone elastomer
and viscosity adjustment in paints, coatings, printing inks, adhesives and unsaturated polyester resins. It
is also used in the production of cat box filler.
4/16/2013http://en.wikipedia.orglwikilFumed_silica
Precipitated silica - Wikipedia, the free encyclopedia Page 10f2
Precipitated silica

From Wikipedia, the free encyclopedia
Precipitated silica is a silica produced by precipitation.
Contents
• 1 Production
• 2 Properties
• 3 Applications I
• 4 See also !
• 5 References
Production
The production of precipitated silica starts with the reaction of an alkaline silicate solution with a
mineral acid. Sulfuric acid and sodium silicate solutions are added simultaneously with agitation to
water. Precipitation is carried out under alkaline conditions. The choice of agitation, duration of
precipitation, the addition rate of reactants, their temperature and concentration, and pH can vary the
properties of the silica. The formation of a gel stage is avoided by stirring at elevated temperatures. The
resulting white precipitate is filtered, washed and dried in the manufacturing process. [1]
Naz(SiOzh.3(aq) + HzS04(aq) ~ 3.3 SiOz(s) + NaZS04(aq)
Properties
The particles are porous. Primary particles with a diameter of 5 - 100 nm, and specific surface area 5­
100 mZlg. Agglomerate size is 1 - 40 11m with average pore size is > 30 run. Density: 1,9 - 2,1 g/cm3.
Applications
• Filler, softener and performance improvement in rubber and plastics·
• Cleaning, thickening and polishing agent in toothpastes for oral health care
• Food processing and pharmaceuticals additive as anti caking, thickening agent, absorbent to make
liquids into powders.
• Food rheology modifier
• Defoamer component.
See also
• Colloidal silica
• Fumed silica
• Hydrophobic silica
4/16/2013http://en.wikipedia.org/wikilPrecipitated_silica
Precipitated silica - Wikipedia, the free encyclopedia Page 2 of2
References
1. "Garrett, P.R. (1992). Defoaming. Theory and Industrial applications. U.S.A.: CRC Press. pp. 238-239.
ISBN 0-8247-8770-6.
Retrieved from ''http://en.wikipedia.orglw/index.php?title=Precipitated_silica&oldid=550309359"
Categories: Silicon dioxide
• This page was last modified on 14 April 2013 at 14:00 .
• Text is available under the Creative Commons Attribution-ShareAlike License; additional terms
may apply. By using this site, you agree to the Terms of Use and Privacy Policy.
Wikipedia® is a registered trademark of the Wikimedia Foundation, Inc., a non-profit
organization.
4/16/2013http://en.wikipedia.orglwikilPrecipitated_silica
Nanocrystalline silicon - Wikipedia, the free encyclopedia Page 1 of2
Nanocrystalline silicon
From Wikipedia, the free encyclopedia
Main article: Silicon thin-film cell
NanocrystaUine silicon (nc-Si), sometimes also
known as microcrystalline silicon (p.c-Si), is a form
of porous silicon. [1] It is an allotropic form of silicon
with paracrystalline structure-is similar to
amorphous silicon (a-Si), in that it has an amorphous
phase. Where they differ, however, is that nc-Si has
small grains of crystalline silicon within the
amorphous phase. This is in contrast to
polycrystalline silicon (poly-Si) which consists
solely of crystalline silicon grains, separated by
grain boundaries. The difference comes solely from
the grain size of the crystalline grains. Most
materials with grains in the micrometre range are
actually fine-grained polysilicon, so nanocrystalline
silicon is a better term. The term Nanocrystalline
silicon refers to a range of materials around the transition region from amorphous to microcrystalline
phase in the silicon thin film. The crystalline volume fraction (as measured from Raman spectroscopy) is
another criterion to describe the materials in this transition zone.
nc-Si has many useful advantages over a-Si, one being that if grown properly it can have a higher
electron mobility, due to the presence of the silicon crystallites. It also shows increased absorption in the
red and infrared wavelengths, which make it an important material for use in a-Si solar cells. One of the
most important advantages of nanocrystalline silicon, however, is that it has increased stability over a­
Si, one of the reasons being because of its lower hydrogen concentration. [citation needed] Although it
currently cannot attain the mobility that poly-Si can, it has the advantage over poly-Si that it is easier to
fabricate, as it can be deposited using conventional low temperature a-Si deposition techniques, such as
PECVD, as opposed to laser annealing or high temperature CVD processes, in the case of poly-Si.
Contents
• 1 Uses
• 2 Thin-film silicon
• 3 See also
I • 4 References ·5 Extemallinks L---,------'
4/16/2013http://en.wikipedia.org/wikilNanocrystalline_silicon
Nanocrystalline silicon - Wikipedia, the free encyclopedia Page 2 of2
Uses
The main application of this novel material is in the field of silicon thin film solar cells. As nc-Si has
about the same bandgap as crystalline silicon, which is - L12 eV, it can be combined in thin layers with
a-Si, creating a layered, mUlti-junction cell called a tandem cell. The top cell in a-Si absorbs the visible
light and leaves the infrared part of the spectrum for the bottom cell in nanocrystalline Si.
A few companies are on the verge of commercializing silicon inks based on nanocrystalline silicon or on
other silicon compounds. The semiconductor industry is also investigating the potential for
nanocrystalline silicon, especially in the memory area.
Thin -flint silicon
Nanocrystalline silicon and small-grained polycrystalline silicon are considered thin-film silicon. [2]
See also
• Amorphous silicon
• Conductive ink
• Nanoparticle
• Printed electronics
• Protocrystalline
• Quantum dot
References
1. 1\ Technical articles (http://www.semiconductor.netlindex.asp?

layout=siTechNews&industryid=4 7307 &starting=341)

2. 1\ Polycrystalline Thin Film (http://wwwl.eere.energy.gov/solar/tCpolycrystalline.html)
http://nanossc.blogspot.com/
External links
• Thin-film silicon solar cells (http://www.wat.edu.pllreview/optor/12(1)l.pdf).
Retrieved from ''http://en.wikipedia.orglw/index. php?title=N anocrystalline_silicon&0Idid=55 0290604 n
Categories: Silicon forms ISilicon solar cells ISemiconductor materials IAllotropy IThin-film cells
• This page was last modified on 14 April 2013 at 10:49.
• Text is available under the Creative Commons Attribution-ShareAlike License; additional terms
may apply. By using this site, you agree to the Terms of Use and Privacy Policy.
Wikipedia® is a registered trademark of the Wikimedia Foundation, Inc., a non-profit
organization.
4/16/2013http://en.wikipedia.orglwikiINanocrystalline_silicon