Appeal No. 2000-1007
Application 08/853,007
one alkylating agent or transalkylating agent in the presence of a catalyst comprising at least a
binder-free molecular sieve having an X-ray diffraction pattern that includes the lines set forth in
specification Table A. A molecular sieve having an X-ray diffraction pattern that includes the
lines set forth in Table A is MCM-22 (specification, page 7, line 11; appealed claim 10).
The reference relied on by the examiner are:
Kushnerick et al. (Kushnerick) 4,992,606 Feb. 12, 1991
The examiner has rejected appealed claims 1 through 10 under 35 U.S.C. § 102(b) as
being anticipated by Kushneick. The examiner has rejected appealed claims 1 through 10 under
35 U.S.C. § 103(a) as being unjpatentable over Kushneick.
Appellants, in the brief (page 4), group the appealed claims thusly: appealed claims 1
through 6, 8 and 10; and appealed claims 7 and 9. Thus, we decide this appeal based on
appealed claims 1 and 9. 37 CFR § 1.192(c)(7) (1997).
We affirm both grounds of rejection with respect to appealed claims 1 through 6, 8 and
10, and reverse with respect to appealed claims 7 and 9.
Rather than reiterate the respective positions advanced by the examiner and appellants,
we refer to the examiner’s answer and to appellants’ brief for a complete exposition thereof.
Opinion
As an initial matter, we find that, when considered in light of the written description in
the specification as interpreted by one of ordinary skill in this art, see, e.g., In re Morris, 127
F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997), the plain language of appealed
claim 1 requires a “catalyst comprising a binder-free molecular sieve” (emphasis supplied),
whether further characterfized in appealed claim 1 by “an X-ray diffraction pattern” or in
appealed claim 10 as “MCM-22.” Appellants have set forth in the written description in the
specification that “[t]he term ‘binder-free’ as used herein describes the synthetic porous
crystalline material or molecular sieve as being substantially free or free of binder material such
as clays or metal oxides, i.e., alumina or silica” (page 11, lines 32-34; emphasis supplied).
Accordingly, we must interpret the term “binder-free” in claim 1 in the manner that appellants
have defined it. See Morris, supra (“[T]he PTO applies to the verbiage of the proposed claims
the broadest reasonable meaning of the words in their ordinary usage as they would be
understood by one of ordinary skill in the art, taking into account whatever enlightenment by
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