*1 Application of Morris MINDICK and Lewis Reven. E. Appeal

Patent No. 7731.

United States Court Customs Appeals. and Patent 9,

Feb. Johnston, Keil, L. Richard

Herbert B. Chicago, 111., appellants. Washington, Schimmel, Joseph D. Commissioner Patents. Judge, WORLEY, Chief Befoi’e Judges, ALMOND, RICH, Judge H. KIRKPATR WILLIAM ICK* Judge.

ALMOND, appeal This is an from the decision Appeals af- the Patent Office Board of firming 13 and 14 of claims application filed serial April 17, 1961, entitled “Method Sta- bilizing Silica Sols.” process invention relates stabilizing aqueous sols and silica acidic thereby. improved products produced process double de- consists aging pe- ionization treatment with an riod the successive deionization between steps, with ion treatment which involve exchange Process claims 16 resins. have the examiner. been allowed contain Product limitations, process are on no read as follows: acidic salt-free silica 13. An essentially consisting anof sol liquid having colloidally dispersed weight therein discrete, dense, non- silica, agglomerated particles particles area surface m2/g, said silica of from 50-800 Pennsylvania, sitting designation. Judge, Eastern district District Senior *2 893 ranging having pH to a between 2.6 ences between claimed invention a and conductivity single specific a disclosures a reference. 3.8 and presents greater 1,000 case such a situation. than micromhos/cm. conductivity Eegardless pH whatever appellants’ 77° with the differences primarily prod- being dis exist between disclosed derived groups Wolter, the ucts and on those think that of the acidic sociation particles, said the claims are so broad as to of the silica surfaces by being read on the of both further characterized sol substantially Wolter, by following maintaining as constant shown a analysis. period. pH storage a month over one expressly Wolter discloses his stable Claim 13 A silica sol as in 14. to silica sols “salt-free.” be pH of sol is between wherein percent The 20 to 35 silica concentration 2.9 about and 3.5. patentee’s products wholly lies upon relied The sole reference range expressed within the to. patent is Canadian Wolter appellants’ in sur claims. The Initially, February 14, 1956. issued face area of Wolter’s sols is stated statutory precise that the basis observe nr/g, 80 to 200 well within the 50 to rejection art has been nr/g range recited in the claims be by expressed either the examiner or the fore us. The conductance of the “com board, holding merely prod that the both pletely deionized” Wolter sols is stated “unpatentable uct claims over Wol mho/cm.,” to be “less than 4 times 10—'1 since, board, ter” in the words of the i. micromhcs/cm., e. less than 400 broadly defined, “the as fail as fully meets the claim limitation that patentably distinguish over the conductivity greater 1,000 be not than generally ucts of Wolter.” We view such micromhos/cm. rejections disfavor, with since neither Wolter discloses in 6 an acidic as nor court is informed final “complete- which had been rejection to whether the is ly by passing through first it anticipation under 35 102 or U.S.C. § cation-exchanger, a then an anion-ex- obviousness under As 103. changer, cation-exchanger followed a general rule, a we think examiners and anion-exchanger.” and an The acidic obligation the board an to state resulting from this double deioniza- precision statutory for a basis pH 3.2; tion treatment had a rejection, otherwise unless the basis is sample states “a of this sol clear from used. the terms While gelled storage had not after month by” “fully “anticipate” and words met temperature,” at room it i. e. remained rejection, connote section 102 and such at least one month at room obvious,” “render or even “un words as patentable pH of 3.2 for the (when over” a combination of final exactly of Wolter’s 6 lies references, distinguished from a sin midpoint pH at the of both the gle reference, used) connote a is section range appel- 2.6 to 3.8 set forth statutory rejection, for a basis preferred range lants’ claim and prior art cannot be ascertained of 2.9 to 3.5 claim single readily when reference is appel- limitation to effect that “unpatentable used and terms such as lants’ is “further characterized distinguish” “patentably over” and employed are maintaining pH rejection. to state the storage period” over a one month recognize merely way hand, saying On the other another gel exceptional cases doubts exist sol remained stable did over storage period.1 differ- a one month whether there are in fact The use prior art-recognized pH changes instability acknowledged 1. The correlation between and sol appellants’ specification. “substantially” permits after also examiner to enter an amendment word some limited variation in is a matter storage of of dis- a sol. discretion. If there is an abuse cretion, be remedied to his disclosure that the *3 addition petition to a Rule the Commissioner doubly sol of judicial review of Patents. Ultimate month, one stable for at least proce- practice of such matters of required by the of the all that is terms had Court. dure in District us, broad claims before Wolter Appeals, court, does like the Board of also teaches that: the of consider the issue whether ** * be stable 30% proposed examiner’s refusal to enter the or at as much as months more several consti- amendment after longer pe- temperature and for room part. his tuted an of discretion on abuse temperatures riods at room below * * At a concentra- summary, appellants tion of 20 will be Si02 out, pointed % unable have been longer comparatively times. any find, differences between subject of broad claimed products dis- It well be that prior art sili and the uct claims 13 and 14 by appellants are stable almost closed Wolter, especially ca sols permanently, years, or for several while patentee’s 6. Conse reference quently, products the Wolter are stable regard months,” years. but several “several anticipation under this case However, assuming, without de- even 102(b), affirm the and we ciding, so, present that this is decision that claims board’s read on as those of such unpatentable over Wolter. storage periods which are stable for month, at substantially least one which time Affirmed. is maintained. so claims before us are Judge (concurring). perceive broad we are unable to Board of The record shows the claimed differences subject all between Appeals an examiner- here consisted of matter and the art silica acting two examiners-in- in-chief and sols Wolter. challenge Appellants do not chief. legality For the reasons regard of that board. With to the breadth my opinion dissenting note from the Wiechert, 370 F.2d In re record that offered to cancel my -, decision of such board 14 and to claim 13 inser amend legal However, nullity. I process, is a view tion limitations the allowed majority’s accept on this view into a must would convert claim 13 legal- case, i.e., However, product-by-process issue in the Wiechert ity claim. an issue here. board is not refused amendment examiner to enter an participate embodying merits proposals, I in the which re therefore these agree assign doing, and in so in their this fusal error majority. appeal. The refusal of an conclusion reasons