Appeal No. 95-2245
Application No. 08,011,563
Their use as inert particulate material is described
in, for example, U.S. Patent No. 4,455,288 and
4,784,841. Such scrub particles consist of titanium
dioxide, which may be subjected to additional
calcining and have a particle size preferable above
0.15 mm.
Consistent with this passage in the specification, original
claims 2 and 5 recite:
2. The process according to Claim 1, wherein the
titanium dioxide catalyst is sintered titanium
dioxide particles.
5. The process according to Claim 1, wherein the
titanium dioxide particles are obtained as a by-
product in preparation of titanium dioxide according
to the chloride process.
From our perspective, the above passage alone, or together
with original claims 2 and 5, clearly conveys to the artisan
that the inventor had possession of the invention now claimed
at the time the application was filed. Accordingly, we
reverse the examiner’s decision rejecting claims 1, 3, 4 and 6
through 12 under 35 U.S.C. § 112, first paragraph.
Obviousness
The obviousness of an invention cannot be established by
combining the teachings of the prior art absent some teaching,
suggestion or incentive supporting the combination. See ACS
Hospital Systems, Inc. v. Montefiore Hospital, 732 F.2d 1572,
8
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