Ex parte Rieber et al.

Board of Patent Appeals and Interferences

Mar 27, 1998

07842915 (B.P.A.I. Mar. 27, 1998)

Application for patent filed February 27, 1992. According1
to the appellants, this application is a continuation-in-part of
Application 07/483,440, filed February 7, 1990, now abandoned;
which is a continuation of Application 07/225,107, filed July 27,
1988, now abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ROY S. RIEBER, WILLIAM A. MALLOW,
and JESSE R. CONNER
__________
Appeal No. 96-0216
Application 07/842,9151
__________
ON BRIEF
__________
Before JOHN D. SMITH, ELLIS and OWENS, Administrative Patent
Judges.
ELLIS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1, 3
through 10, and 12 through 18. Claims 19 through 29 are also
Appeal No. 96-0216
Application 07/842,915

2
pending, but have been withdrawn from consideration by the
examiner in accordance with 37 CFR § 1.142(b).
Claims 1 and 9 are illustrative of the subject matter on
appeal and read as follows:
1. A method of producing a clear soluble silicate solution
free of unreacted silica from biogenetic silica containing metal
salts and organic material which could leach into and contaminate
and color the soluble silicate solution comprising,
dissolving in a closed container the biogenetic
silica in an alkali solution of at least pH 12 in an
amount effective to dissolve all of the biogenetic
silica and at a temperature not higher than 275EF in
the presence of a solid carbonaceous material thereby
preventing the metal salts and organic material from
leaching into and coloring the resulting soluble
silicate solution,
removing the resulting soluble silicate solution
from the closed container, and
separating the solid carbonaceous material, the
metal salts and organic material from the resulting
soluble silicate solution.
9. The method of claim 1 including, frothing the separated
resulting soluble silicate solution to form a foam.
The references relied on by the examiner are:
Blardone 1,293,008 Feb. 04, 1919
Nakagawa 39-27314 Nov. 30, 1964
(Japanese patent publication)
Mallow et al. (Mallow) 3,856,539 Dec. 24, 1974
Claims 1, 3 through 10 and 12 through 18 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Nakagawa in view
Appeal No. 96-0216
Application 07/842,915

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of Blardone with claims 8, 9, 17 and 18 standing further rejected
in view of Mallow.
We reverse.
The claimed invention is directed to a method of making a
clear, soluble silicate solution from biogenetic silica. The
biogenetic silica is obtained from the burning of biogenetic
materials such as
rice hulls, rice stalks, esquitum (horsetail weed), bagasse,
certain bamboo palm leaves, particularly palmyra, pollen and
the like. The burning of the biogenetic material is done
under controlled conditions so that substantially all of the
silica is in an amorphous rather than a crystalline state
[Specification, p. 6, line 30- p. 7, line 1].
The biogenetic silica is dissolved in a strong alkali solution
(pH 12) and heated in a closed container to a temperature not
higher than 275EF in the presence of a solid carbonaceous
material.
According to the specification, sodium silicate is
conventionally made by fusing high purity soda ash and
silica sand in furnaces at temperatures of 1300E to 1500EC
and higher to produce a solid glass. The liquid is made by
dissolving the glass with steam and hot water. This is
known as the open hearth process which is the foundation of
all commercial processes for making sodium silicate today
[Specification, p. 1, line 32- p. 2, line 7].
Nakagawa discloses a method of making a silicate solution
wherein silica sand, silica clay, an alkaline aqueous solution
Appeal No. 96-0216
Application 07/842,915

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such as caustic soda and caustic potash, and an active carbon,
are heated in a sealed container at 150E-220EC (392E-410EF) and
10-20 kg/cm pressure. Nakagawa, p. 2, first complete para.
Blardone, discloses a process for extracting silica from the
hulls of grains. Blardone col. 1, lines 10-14. Blardone
describes the boiling of burned rice hulls in a solution of water
and sodium hydroxide for several hours, followed by filtration.
Id, col. 1, lines 38-45. The mass remaining in the filter is
washed with water and the filtrate concentrated, to the extent
desired, by boiling. Id., sentence bridging col. 1-2. Mallow
discloses a method of making a solidified silica foam product
from sodium silicate, potassium silicate, or mixtures thereof.
Mallow, col. 1, lines 10-14.
The examiner has primarily based his conclusion of
obviousness on the teachings of Nakagawa and Blardone. According
to the examiner,
[i]t would have been obvious to one having ordinary skill in
the art to employ ash as a source of raw siliceous material
for the advantages of low price and availability as a waste
product of the rice industry. Applicants’ limitation of the
upper temperature limit and pressure would have been obvious
to one having ordinary skill in the art. This is evidenced
by applicants’ statement (page 10, lines 30-33 of the
instant specification) that by simple experiments optimum
temperature and pressures can be determined. It would have
been within the purview of the ordinary artisan to optimize
the temperature and pressure of the kinetics of dissolution
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Application 07/842,915

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for the advantages of energy conservation and expedient
dissolution [Answer, p. 5, second complete para.].
It is well established that the PTO bears the initial burden
under 35 U.S.C. § 103 of presenting a prima facie case of
obviousness. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596,
1598 (Fed. Cir. 1988); In re Piasecki, 745 F.2d 1468, 1472, 223
USPQ 785, 788 (Fed. Cir. 1984). The examiner must establish that
the teachings of the applied prior art would have suggested the
present method to a person having ordinary skill in the art, and
that such persons would have had a reasonable expectation of
success of preparing the claimed compositions. In re O’Farrell,
853 F.2d 894, 903-904, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988).
This suggestion must be in the prior art, and not in the
applicant’s disclosure. In re Dow Chemical Co., 837 F.2d 469,
473, 5 USPQ2d 1529, 1532 (Fed. Cir. 1988).
In the case before us, we are unable to discern how the
examiner has reached his conclusion of obviousness. As developed
in the Brief, the teachings of Nakagawa and Blardone collectively
differ in the silica starting material, processing temperatures,
and/or procedures (a closed pressurized system versus the open
hearth method). None of the references teaches or suggests the
combination of process steps which involve (i) heating biogenetic
Appeal No. 96-0216
Application 07/842,915

We find that the examiner has misconstrued the statement2
on p. 10, lines 29-33 of the specification, with respect to the
amount of experimentation necessary to determine the optimum
temperature and pressure for making a clear soluble silicate
solution. The specification statement is not an admission as to
the level of skill in the art but, rather, it is a description of
the appellant’s invention. It is the appellants who have
discovered the critically of not heating the reaction components
at temperatures greater than 275E F. See specification examples
4 through 8. The specification statement is merely advising
those skilled in the art that, provided they do not exceed the
275E F limitation, it is possible to vary the temperature and
pressure conditions, and still produce a clear, soluble silicate
solution.
6
silica and an alkali solution in a closed container, and (ii)
maintaining the temperature of the reaction at less than 275EF.
That is, we find no suggestion in the Nakagawa reference to
substitute silica sand (a crystalline starting material) for
biogenetic silica (an amorphous, organic starting material)
derived from burned rice hulls, etc., and to heat said biogenetic
silica within the claimed temperature range. Nor do we find any
suggestion in Blardone to employ biogenetic silica in the method
described by Nakagawa at temperatures not greater than 275EF. On
this record, we only find these suggestions in the appellants’
disclosure. Accordingly, we find that the examiner has relied2
on impermissible hindsight in making his determination of
obviousness. In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780,
1784 (Fed. Cir. 1992); Interconnect Planning Corp. v. Feil, 774
Appeal No. 96-0216
Application 07/842,915

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F.2d 1132, 1138, 227 USPQ 543, 547 (Fed. Cir. 1985) (“It is
impermissible to engage in hindsight reconstruction of the
claimed invention, using the applicant’s structure as a template
and selecting elements from references to fill the gaps.”) W.L.
Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ
303, 312-313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984)
(“To imbue one of ordinary skill in the art with knowledge of the
invention in suit, when no prior art reference or references of
record convey or suggest that knowledge, is to fall victim to the
insidious effect of a hindsight syndrome wherein that which only
the inventor taught is used against its teacher”).
Accordingly, the rejection over Nakagawa and Blardone is
reversed.
The appellants respond on pp. 8-10 of the Brief, to three
references ( Vail, Goodwin and Shugar) which were made of record,
but not relied on for purposes of rejection, by the examiner.
Paper No. 5, p. 6; Paper No. 8, p. 6. However, we point out that
the examiner's reliance on these references to support his
arguments throughout prosecution and in the Answer is
inappropriate. It is well established that "[w]here a reference
is relied on to support a rejection, whether or not in a 'minor
capacity,' there would appear to be no excuse for not positively
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Application 07/842,915

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including the reference in the statement of the rejection." In
re Hoch, 428 F.2d 1341, 1342, n.3, 166 USPQ 406, 407, n.3 (CCPA
1970). Therefore, references not included in the statement of
rejection are not considered by this Board. Consequently, we
need not address the issues raised with respect thereto in either
the appellants’ Brief or the examiner’s Answer.
Since we find that the examiner has not established a prima
facie case of obviousness over the Nakagawa and Blardone, it
necessarily follows that the further rejection of claim 8, 9, 17
and 18 over Mallow is not sustainable. In view of our discussion
above, no further comment is deemed necessary.

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Application 07/842,915

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Accordingly, the decision of the examiner is reversed.
REVERSED
)
JOHN D. SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOAN ELLIS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
TERRY J. OWENS )
Administrative Patent Judge )
Appeal No. 96-0216
Application 07/842,915

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