11037118 (B.P.A.I. Nov. 30, 2010)

Ex Parte Panz et al

Board of Patent Appeals and InterferencesNov 30, 2010

11037118 (B.P.A.I. Nov. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE _________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte CHRISTIAN PANZ, RENE ALLERDISSE, HELGA OBLADEN, MARIO LOEBBUS, ANJA LUKAS, ROLAND BERGMANN, and KARL MEIER __________ Appeal 2010-001481 Application 11/037,118 Technology Center 1700 ___________ Before ADRIENE LEPIANE HANLON, DEMETRA J. MILLS, and KAREN M. HASTINGS, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON REHEARING The Appellants request rehearing of a DECISION ON APPEAL dated August 19, 2010,1 affirming the Examiner’s decision that claims 1-12, 42, and 45-47 are unpatentable. A request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board. 1 Hereinafter “Decision.” Appeal 2010-001481 Application 11/037,118 2 Arguments not raised in the briefs before the Board and evidence not previously relied upon in the briefs are not permitted in a request for rehearing except as permitted by 37 C.F.R. §§ 41.52(a)(2) and (a)(3). See 37 C.F.R. § 41.52(a)(1) (2010). The Appellants request rehearing for the following reasons: (1) the Board misapprehended the principle of law that “a prima facie rejection is properly established when the difference in range or value is minor” and overlooked the Board’s holding in Ex parte Tanaka, No. 2007-3845 (BPAI March 28, 2008); and (2) the Board’s statement that there is no evidence that a silica having a pH of 9.2 would exhibit properties different from a silica having a pH of 5.0-9.0 overlooks the Appellants’ inventive and comparative examples. Discussion The Appellants argue that Schachtely does not contemplate a silica having a pH of greater than 9. Request 2. However, the issue in this appeal is not whether Schachtely suggests a pH value greater than 9.0 or 9.05. The issue is whether the Examiner reversibly erred in concluding that the claimed silica having a pH of 9.2 or 9.8 and the silica disclosed in Schachtely having a pH of 9.0 or 9.05 would have been expected to exhibit the same or substantially the same defoaming properties. See Decision 4. In Tanaka, slip op. at 4-5, although the carbon content of the prior art and the claimed invention differed by 0.05%, the Board explained: JP ‘740 teaches a carbon content which is entirely outside of the claimed range and specifically warns against exceeding the upper limitation of 0.9% C due to the materially different property expected by one of ordinary skill in the art. In other words, contrary to the Examiner’s assertion, JP ‘740 teaches Appeal 2010-001481 Application 11/037,118 3 that the inclusion of greater than 0.9% carbon does not expect to produce a steel alloy having the same properties as a steel alloy having 0.5% to 0.9% carbon as required by Titanium Metal[s] Corp. of America[, 778 F.2d 775 (Fed. Cir. 1985)]. [Emphasis in original.] In this case, the Appellants do not direct us to any evidence establishing that the claimed silica having a pH of 9.2 or 9.8 and the silica disclosed in Schachtely having a pH of 9.0 or 9.05 would not have been expected to exhibit the same or substantially the same defoaming properties. The Appellants argue that the Board overlooked evidence on page 6, line 1 to page 8, line 11 of the Appeal Brief demonstrating that the claimed silicas have different properties than the silicas of Schachtely. Request 3. However, the Board did not overlook this evidence. See Decision 4-7. In particular, the Board explained: [T]he evidence relied on by the Appellants does not compare the anti-foam effects of a hydrophobic precipitated silica having a pH of 9.2 and the anti-foam effects of a hydrophobic precipitated silica having a pH of 9.05 or 9.0. Rather, according to Table 1, the pH of the silica in Example 2 is 9.7 and the pH of the silica in Comparative Example 2 is 7.9. Decision 5. Likewise, the evidence relied on by the Appellants does not compare the anti-foam effects of a silica having a pH of 9.8 and a silica having a pH of 9.05 or 9.0. The Appellants argue that the Board assumes that the silicas disclosed in Schachtely have the same properties across the broad 5.0-9.0 pH range. Request 3. However, this argument mischaracterizes the Board’s position. The assumption referred to by the Appellants was made solely for the purpose of argument and does not excuse the Appellants’ failure to compare the defoaming properties of the claimed silica having a pH of 9.2 or 9.8 and Appeal 2010-001481 Application 11/037,118 4 the silica disclosed in Schachtely having a pH of 9.0 or 9.05. See Decision 5-6. In sum, the Appellants have failed to show that the Board erred in affirming the Examiner’s rejection of claims 1-12, 42, and 45-47 under 35 U.S.C. § 103(a) as obvious over Degussa AG (EP 1281735), as evidenced by Schachtely (US 7,022,375).2 Conclusion The Appellants’ Request for Rehearing has been granted to the extent that the DECISION ON APPEAL dated August 19, 2010, has been reconsidered in light of the Appellants’ arguments. However, the Request is denied because the Decision is not modified in any respect. REHEARING DENIED sld OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA VA 22314 2 The Appellants do not request rehearing of our decision affirming the Examiner’s rejection of claims 1-12, 42, and 45-47 on the ground of nonstatutory obviousness-type double patenting as unpatentable over claims 1-6 of US 7,022,375 and the provisional rejection of claims 1, 2, 4-12, 42, and 45-47 on the ground of nonstatutory obviousness-type double patenting as unpatentable over claims 1-8 and 22-29 of copending Application 11/036,987.