Ex Parte Stenzel et al

Board of Patent Appeals and Interferences

Apr 12, 2010

10522672 (B.P.A.I. Apr. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte OLEG STENZEL, STEFAN UHRLANDT, HANS-DETLEF
LUGINSLAND, and ANDRE WEHMEIER
____________

Appeal 2010-000024
Application 10/522,672
Technology Center 1700
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Decided: April 12, 2010
____________

Before EDWARD C. KIMLIN, PETER F. KRATZ, and MARK NAGUMO,
Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 1-4 and 20.
Claims 5-15, 17 and 19 stand withdrawn from consideration. Claim 1 is
illustrative:
1. A precipitated silica which has the following properties:

BET surface area 200 - 300 m2/g,
Appeal 2010-000024
Application 10/522,672

2
CTAB surface area ≥ 170 m2/g,
DBP number 200 - 300 g/(100 g), and
Sears number V2 23-35 ml/(5 g).

The Examiner relies upon the following reference as evidence of
obviousness:

Uhrlandt 6,180,076 B1 Jan. 30, 2001

Appellants’ claimed invention is directed to a precipitated silica
having the recited properties.
Appealed claims 1-4 and 20 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Uhrlandt.1
We have thoroughly reviewed the respective positions advanced by
Appellants and the Examiner. In so doing, we will not sustain the
Examiner’s rejection.
As acknowledged by Appellants, Uhrlandt discloses a precipitated
silica having ranges of values for BET surface area, CTAB surface area,
DBP number, and Sears number V2 which overlap the claimed ranges.
Although the exemplified silicas of Uhrlandt do not possess properties
having values that fall within all four of the recited ranges, we do not agree
with Appellants that the appealed claims are “only a very small and narrow
part” of the referenced disclosure such that silicas within the scope of the
appealed claims are not prima facie obvious.
However, the Examiner has committed reversible error by not
properly evaluating Appellants’ Declaration evidence and weighing its
probative value against the evidence of obviousness. Appellants’

1 We presume the omission of claim 20 from the statement of the rejection at
page 3 of the Answer is an oversight.
Appeal 2010-000024
Application 10/522,672

3
Declaration provides a comparison between an exemplified silica of
Uhrlandt and an example representative of the claimed silica. According to
the Declarant, the higher CTAB values of the inventive precipitated silica
lead to reduced attrition while maintaining a rolling resistance of the tire
comprising the silica. In the words of the Declarant, “[t]his effect was
unexpected, because one of skill in the art would expect that upon an
increase in the CTAB values, an increase in rolling resistance would be
observed” (Dec. ¶5).
The Examiner errs in evaluating the declaration by stating that “the
claims are drawn to a silica, not to tires” (Ans. 6, last para.). Appellants
properly state that “the properties of dynamic modulus and rigidity of tires
prepared from the present precipitated silica are disclosed properties, as
described in the specification at page 32, lines 8-11, which properties
therefore can be relied upon in evaluating the difference between the
precipitated silica as claimed and that of Uhrlandt et al.” (Prin. Br. 7, first
full para.).
The Examiner further errs in stating that the reference examples
“cannot be compared to the instant invention in any way because none of the
examples of Uhrlandt et al. have all the parameters within the instantly
claimed ranges” (Ans. 7, last para.). However, such a requirement would
preclude an Applicant from rebutting a prima facie case of obviousness with
unexpected results for a claimed sub-genus that falls within a broader genus
of the prior art. As set forth by Appellants, “[t]he Examiner’s rationale
appears to be that Appellants should have compared the present invention to
the present invention!” (Reply Br. 3, third full para.). Manifestly, such a
requirement is improper.
Appeal 2010-000024
Application 10/522,672

4
In conclusion, based on the foregoing, we are constrained to reverse
the Examiner’s rejection.

REVERSED

kmm

OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314