Ex Parte Eriyama et al

Board of Patent Appeals and Interferences

Sep 24, 2010

10205626 (B.P.A.I. Sep. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YUICHI ERIYAMA, ATSUYA TAKAHASI,
ISAO NISHIWAKI, and TAKASHI UKACHI
____________

Appeal 2009-004849
Application 10/205,626
Technology Center 1700
____________

Before CHUNG K. PAK, CAROL A. SPIEGEL, and JEFFREY T. SMITH,
Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL1
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1 through 10, and 12. Claim 14, the other
pending claim in the above-identified application stands withdrawn from

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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consideration by the Examiner.2 We have jurisdiction under 35 U.S.C. §§ 6
and 134.
STATEMENT OF THE CASE
Details of the appealed subject matter are recited in representative
claim 1 reproduced from the Claims Appendix to the Appeal Brief as shown
below:

1. A method for manufacturing hydrophobic colloidal silica
comprising the following steps:

(a) taking a colloidal silica dispersed in an aqueous dispersant

(b) replacing a substantial amount of the aqueous dispersant with one or
more hydrophilic organic solvent(s) by using an ultrafilter membrane

(c) preparing hydrophobic colloidal silica by reacting the colloidal silica
with an hydrophobizing agent

(d) replacing the liquid phase of the dispersion comprising the organic
hydrophilic solvent with one or more hydrophobic organic solvent(s) by using
an ultrafilter membrane to obtain a hydrophobic colloidal silica dispersed in a
hydrophobic organic solvent.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies on the following prior art references at pages 2and 3 of the
Answer dated January 24, 20063:

2 See page 2 of the Appeal Brief (“App. Br.”) filed February 28, 2005.
3 Our reference to these Japanese prior art documents is to the corresponding
English translations of record. We note that the Examiner also refers to an
additional Japanese document, i.e., JP 59008614 A issued to Arima et al. on
Jan. 17, 1984, at page 6 of the Answer. However, we decline to consider JP
5900861 A since it is not included in the statements of rejection. See In re
Hoch, 428 F.2d 1341, 1342 n. 3 (CCPA 1970) (“Where a reference is relied
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Arima JP 58145614 A Aug. 30, 1983
Hashimoto JP 01304187 A Dec. 7, 1989
Ogihara JP 03187913 A Aug. 15, 19914

The Examiner set forth the following grounds of rejection at pages 3
through 6 of the Answer5:
1) Claims 1, 2, 6, 8 through 10, and 12 under 35 U.S.C. § 103(a)
as unpatentable over Arima in view of Hashimoto6; and
2) Claims 3 through 5 and 7 under 35 U.S.C. § 103(a) as
unpatentable over Arima in view of Hashimoto and Ogihara.
DISCUSSION
I. CLAIMS 1, 2, 6, 8 through 10 and 12:
The Examiner finds, and Appellants do not dispute, that Arima
teaches taking a colloidal silica hydrosol dispersed in an aqueous dispersant

on to support a rejection, whether or not in a ‘minor capacity,’ there would
appear to be no excuse for not positively including the reference in the
statement of the rejection.”).
4 The Examiner inadvertently refers to it as “Ohiwara” (Ans. 2 and 5).
5 The Examiner entered the amendment filed on November 23, 2004 after
the final Office action dated August 26, 2004 and then did not repeat the §
112, second paragraph, rejection set forth in the final Office action in the
Answer. Thus, this § 112 rejection is presumed withdrawn. Ex parte Emm,
118 USPQ 180, 181 (Bd. App. 1957) (Since the ground of rejection set forth
in the final Office action does not appear in the Answer, we presume that the
rejection stands withdrawn.)
6 We will address the claims on appeal separately only to the extent that they
have been argued separately. See 37 C.F.R. § 41.37(c)(1)(vii) (“When
multiple claims subject to the same ground of rejection are argued as a group
by appellant, the Board may select a single claim from the group of claims
that are argued together to decide the appeal with respect to the group of
claims as to the ground of rejection on the basis of the selected claim
alone.”).

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(water), replacing a substantial amount of the aqueous dispersant with at
least one hydrophilic organic solvent by using an ultrafilter membrane to
convert the hydrosol into colloidal silica organosol, hydrophobizing the
colloidal silica with a hydrophobizing agent to form a hydrophilic organic
solvent containing hydrophobic colloidal silica, and distilling off
(removing) the hydrophilic organic solvent to form a hydrophobic colloidal
silica powder. (Compare Ans. 3-4 with App. Br. 5-8; see also the Evidence
Appendix B of the Appeal Brief.) The Examiner also correctly finds at page
4 of the Answer that Arima teaches dispersing the hydrophobic colloidal
silica powder in a hydrophobic organic solvent, such as methyl ethyl ketone,
toluene, or xylene, to obtain a hydrophobic organic solvent containing
dispersed hydrophobic silica. (Compare Arima, p. 20 with Spec. 7, ll. 3-10.)
In other words, Arima teaches the claimed method, including replacing the
hydrophilic organic solvent with the hydrophobic organic solvent to form a
hydrophobic organic solvent containing dispersed hydrophobic silica, with
the exception of using an ultrafilter membrane for carrying out such
replacement.
Thus, the first critical question raised by Appellants is: Has the
Examiner erred in determining that it would have been prima facie obvious
to employ an ultrafilter membrane for carrying out such solvent replacement
in Arima’s method to obtain its hydrophobic organic solvent containing
dispersed hydrophobic silica? On this record, we answer this first question
in the negative.
As correctly found by the Examiner at pages 4 and 5 of the Answer,
Hashimoto teaches conventional solvent replacement or exchange methods,
such as distillation or ultrafiltration (ultrafilter membrane), useful for
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replacing the hydrophilic solvent that contains dispersed silica sol (colloidal
silica) with a non-reactive hydrophobic solvent. See also Hashimoto, p. 4.
Specifically, Hashimoto teaches (p. 4) that:
The methods of solvent exchanges which can be used
include (1) removal of water and low-boiling matter by
distillation, (2) use of ultrafilter, (3) use of molecular sieve, etc.,
however any method which can carry out solvent exchange can
be used.

Arima, like Hashimoto, teaches using the same conventional solvent
replacement methods, such as distillation and ultrafiltration, for other types
of solvents as well. See p. 9.
Given these teachings, we concur with the Examiner that one of
ordinary skill in the art would have been led to employ a conventional
solvent exchange or replacement method, such as distillation or the claimed
ultrafiltration, in Arima’s process for preparing a hydrophobic organic
solvent containing hydrophobic colloidal silica within the meaning of 35
U.S.C. § 103(a).
Appellants separately argue the limitations of claims 2, 6, 8, 9, 10, and
12 (App. Br. 10-12). Notwithstanding Appellants’ arguments to the
contrary, however, we concur with the Examiner that Arima specifically
teaches its hydrophilic organic solvent as including an alcohol as required by
claim 6 and its hydrophobic organic solvent as including methyl ethyl ketone
as required by claims 8 and 9 (pp. 10, 16 and 20). The Examiner also
correctly finds at pages 3, 8, and 9 of the Answer that Arima teaches
replacing water with the hydrophilic organic solvent, an alcohol, until less
than 10 wt% of water is present as required by claim 2 and dispersing
hydrophobic colloidal silica substantially free of the hydrophilic organic
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solvent in a hydrophobic organic solvent as required by claims 10 and 12
(Arima, pp. 10, 16, and 20).
Appellants assert at page 8 of the Appeal Brief that:
Appellants have demonstrated the unexpected result
achieved by the present invention in the Example section of the
specification, in particular Example 1 compared with
Comparative Example 1, see Table 1 page13 of the Appellants’
specification. Example 1 compares the superior stability
achieved by a hydrophobic colloidal silica/hydrophobic organic
dispersion formed by the method of the present invention with a
non-hydrophobic colloidal silica in the same hydrophobic
organic solvent formed using the same method as in the present
invention, except for the hydrophobizing step.

Thus, the second critical question raised by Appellants is: Have
Appellants demonstrated that the claimed invention imparts unexpected
results, thereby rebutting any prima facie case of obviousness established by
the Examiner? On this record, we answer this question in the negative.
As correctly found by the Examiner at pages 7 and 8 of the Answer,
Appellants have failed to provide any meaningful experimental evidence in
the Specification demonstrating that the actual differences between the
claimed subject matter and the closest prior art reference, Arima, give rise to
unexpected results. See In re Baxter Travenol Labs, 952 F.2d 388, 392 (Fed.
Cir. 1991) ("[R]esult must be shown to be unexpected compared with the
closest prior art."). In particular, Appellants have not proffered any
meaningful side-by-side comparison in which the inventive experiment was
identical to the process of Arima, except for the solvent replacement step
(ultrafiltration, instead of distillation) of the claimed invention. This is
especially true in this situation since Arima’s process also imparts good
dispersion stability (p. 20). Thus, on this record, Appellants have not carried
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the burden of showing that the claimed invention imparts unexpected results.
In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re Klosak, 455 F.2d
1077, 1080 (CCPA 1972).
Accordingly, based on the totality of record, including due
consideration of Appellants’ arguments and evidence, we determine that the
preponderance of evidence weighs most heavily in favor of obviousness of
the subject matter recited in claims 1, 2, 6, 8 through 10, and 12 within the
meaning of 35 U.S.C. § 103(a).
II. CLAIMS 3 through 5 and 7
Contrary to Appellants’ arguments at pages 12 through 14 of the
Appeal Brief, the Examiner correctly finds at page 4 of the Answer that
Arima teaches its hydrophobizing agent as including a hydrolyzable silicon
compound having at least one alkoxy group, such as methyl
trimethoxysilane, as required by claims 3 through 5 and its hydrophilic
organic solvent as including methyl alcohol (methanol) as required by claim
7 (pp. 10 and 11). Moreover, the Examiner correctly finds at page 6 of the
Answer that Ogihara teaches the same in forming hydrophobic silica powder
(pp. 3-4).
Given these teachings, we concur with the Examiner that one of
ordinary skill in the art would have been led to employ methanol as a
hydrophilic agent and methyl trimethoxysliane as a hydrophobizing agent in
forming the hydrophobic colloidal silica powder taught by Arima. It follows
that the preponderance of evidence weighs most heavily in favor of
obviousness of the subject matter recited in claims 3 through 5 and 7 within
the meaning of 35 U.S.C. § 103(a).
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ORDER
In view of the foregoing, the decision of the Examiner 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) (2008).

AFFIRMED

sld

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