Ex Parte Schlegel et al - Page 6

                Appeal 2007-4098                                                                               
                Application 09/962,887                                                                         
                shows forming powder from “hydrating 99.99 % ultrapure metal oxide with                        
                excess distilled deionized water, heating it under a nitrogen flow forming                     
                metal hydroxide, removing the excess of water in the microwave” (col. 9, ll.                   
                58-65).  The powder prepared in this manner, according to Klabunde, is                         
                compacted and activated (cols. 10 and 11, Table 5).                                            
                      Thus, it is incumbent upon the Appellants to demonstrate that the                        
                claimed pellet prepared from an aqueous suspension is not either identical or                  
                substantially identical to the pellet taught by Klabunde.  Rather than                         
                demonstrating the difference between the claimed and prior art pellets, the                    
                Appellants only argue that Klabunde does not teach preparing pellets from                      
                an aqueous suspension (Br. 10).  In so doing, the Appellants have failed to                    
                recognize that the claims on appeal are directed to a unit containing an                       
                adsorbent/catalyst pellet, not a process for making the same.  In re Thorpe,                   
                777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985) (“ The patentability                     
                of a product does not depend on its method of production….If the product in                    
                a product-by-process claim is the same as or obvious from a product of the                     
                prior art the claim is unpatentable even though the prior product was made                     
                by a different process.”).  On this record, we find that the Appellants have                   
                not relied on any evidence to rebut the prima facie case of anticipation                       
                established by the Examiner (Br. 9-11)4.                                                       


                                                                                                              
                4 Even if we must consider the evidence relied upon by the Appellants in                       
                rebutting the Examiner’s § 103 rejection in the context of the Examiner’s                      
                § 102(b) rejection, we are not convinced that the Appellants have                              
                demonstrated that the pellets encompassed by the claims on appeal are                          
                patentably different from those taught by Klabunde for the factual findings                    
                set forth in the Answer and infra.                                                             
                                                      6                                                        

Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  Next

Last modified: September 9, 2013