Ex Parte Ackerman et al - Page 15

                 Appeal 2006-2523                                                                                      
                 Application 10/206,496                                                                                

                 Appellants contend Adachi does not teach the limitation “the total alcohol                            
                 content as C3-C7 alcohol is added comprise up to 75%” (Br. 18:25-29).                                 
                 Appellants finally contend Adachi adds “alkaline aqueous solutions . . . to                           
                 activate the particle surfaces” and not water to initiate the reaction, citing                        
                 col. 6, ll. 10-15 (Br. 18:29-19:3).                                                                   
                        With respect to dependent claim 2, Appellants contend that at col. 13,                         
                 ll. 30-36, Adachi discloses “adding a solution of aqueous ammonia and                                 
                 propanol dropwise while stirring to a solution of titanium tetrabutoxide and                          
                 n-butanol” which is not encompassed by claim 1 (Br. 19:4-11).                                         
                        Appellants make essentially the same arguments with respect to                                 
                 independent claims 6, 13, and 19 (Br. 20:4-13, 21:22-32, and 22:19-29).                               
                 With respect to independent claim 7, which specifies that the initial solution                        
                 includes alcohols having two to seven carbon atoms, Appellants contend the                            
                 prior art methods “only . . . use ethanol” as described in the Background of                          
                 the Invention, and “the initial reaction solution . . . includes metal oxo-                           
                 hydroxides and phosphates” which are not disclosed by Adachi (id.                                     
                 20:14-18).                                                                                            
                        Appellants contend Adachi teaches away from the claimed invention                              
                 because the reference discloses depositing “titanium oxide coating from a                             
                 metallic precursor onto a metal oxide particle using a sol-gel method” (Br.                           
                 24:7-12).  Appellants further contend even though “a chemical, titanium                               
                 alkoxide, is common” to the claimed processes and those disclosed by                                  
                 Adachi, there is no “motivation to combine the prior art LPP processes with                           
                 the sol-gel process” of Adachi (Br. 26:8-18).  Appellants still further contend                       
                 any prima facie case is rebutted by the disclosure in Specification                                   


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