Appeal No. 2001-2546
Application 09/067,915
appealed claims 1 through 3, 6 and 7 further in view of United Kingdom Patent Specification
1,003,957. 1,2
We first consider the ground of rejection under § 112, first paragraph, written description
requirement. In stating the ground of rejection (answer, page 3), the examiner merely alleges that
“[i]n claim 7, ‘evaporating a zirconium halide to form a vapor in a partial vacuum’ is new
matter.” We note that the cited phrase is not found in appealed claims 1 through 4 and 6, none of
which depend on claim 7, which are also included in this ground of rejection. It is well settled
that the examiner has the burden of making out a prima facie case that an appealed claim does
not comply with this section of the statute by setting forth evidence or reasons why, as a matter of
fact, the written description in appellants’ disclosure would not reasonably convey to persons
skilled in this art that appellants were in possession of the invention defined by the claims,
including all of the limitations thereof, at the time the application was filed. See generally, In re
Alton, 76 F.3d 1168, 1175-76, 37 USPQ2d 1578, 1583-84 (Fed. Cir. 1996), citing In re
Wertheim, 541 F.2d 257, 263-64, 191 USPQ 90, 97 (CCPA 1976). Accordingly, we reverse this
ground of rejection because the examiner does not explain why appealed claim 7 does not
comply with this section of the statute, or why appealed claims 1 through 4 and 6 are involved in
this ground of rejection.
Turning now to the grounds of rejection under § 103(a), in order to establish a prima
facie case of obviousness of appealed product-by-process claims 1, 2 and 6, the examiner must
show that the zirconium dioxide powder prepared by Zirngibl, Saladin and Hori would
reasonably appear to be identical or substantially identical to zirconium dioxide powder having
the characteristics, including preparation by flame hydrolysis, specified in these appealed claims.
See generally, In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985); In re Best,
562 F.2d 1252, 1254-56, 195 USPQ 430, 432-34 (CCPA 1977); see also In re Skoner, 517 F.2d
947, 950, 186 USPQ 80, 82 (CCPA 1975) (“Appellants have chosen to describe their invention
in terms of certain physical characteristics . . . . Merely choosing to describe their invention in
this manner does not render patentable their method which is clearly obvious in view of [the
1 See the amendment of November 28, 2000 (Paper No. 19). The appealed claims are all of the
claims in the application.
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