Ex parte CHUN et al. - Page 2


                   Appeal No. 1998-1584                                                                                                                             
                   Application 08/711,631                                                                                                                           

                   prima facie case of obviousness with respect to both grounds of rejection.                                                                       
                            A prima facie case of obviousness is established by showing that some objective teaching,                                               
                   suggestion or motivation in the applied prior art taken as a whole and/or knowledge generally available                                          
                   to one of ordinary skill in the art would have led that person to the claimed invention as a whole,                                              
                   including each and every limitation of the claims, without recourse to the teachings in appellants’                                              
                   disclosure.  See generally, In re Rouffet, 149 F.3d 1350, 1358, 47 USPQ2d 1453, 1458 (Fed. Cir.                                                  
                   1998); Pro-Mold and Tool Co. v. Great Lakes Plastics Inc., 75 F.3d 1568, 1573, 37 USPQ2d                                                         
                   1626, 1629-30 (Fed. Cir. 1996); In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed.                                                       
                   Cir. 1991); In re Fine, 837 F.2d 1071, 1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988); In                                                    
                   re Dow Chem. Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531-32  (Fed. Cir. 1988).                                                                   
                            It is readily apparent that the plain language of appealed claims 1 and 7, 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), simply                                                        
                   requires that the praseodymium oxide must be “loaded onto” the “surface” of either a cerium oxide or a                                           
                   cerium-zirconium oxide “support material” in forming the claimed mixed oxide.  This is set forth as a                                            
                   specific step in the method of claim 7.  In claim 1, this product-by-process limitation characterizes the                                        
                   product as one in which the praseodymium oxide is deposited onto the surface of the previously formed                                            
                   specified “support material” and thus is included only on that surface.  See, e.g., In re Thorpe, 777                                            
                   F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985).  We note here that while we agree with                                                        
                   appellants’ argument that hafnium oxide is an “indispensable” component of the composite oxide of Yao                                            
                   (brief, pages 6-7), we are of the opinion that appellants have not convincingly established that this oxide                                      
                   would be excluded from claims 1 and 7 through the use of the transitional phrase “consisting essentially                                         
                   of” as this term would be interpreted in light of their specification.  Indeed, we find no disclosure in                                         
                   appellants’ specification which establishes that hafnium oxide would materially affect the basic and novel                                       
                   characteristics of the claimed mixed oxides.  See Morris, 127 F.3d at 1055-56, 44 USPQ2d at 1029;                                                
                   see also PPG Industries Inc. v. Guardian Indus. Corp., 156 F.3d 1351, 1354-57, 48 USPQ2d                                                         

                                                                                                                                                                    
                   2  Answer, pages 4-7.                                                                                                                            

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