Appeal No. 1998-1584
Application 08/711,631
1351, 1353-56 (Fed. Cir. 1998) (Patentees “could have defined the scope of the phrase ‘consisting
essentially of’ for purposes of its patent by making clear in its specification what it regarded as
constituting a material change in the basic and novel characteristics of the invention. The question for our
decision is whether PPG did so.”); In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA
1976); cf. Ex parte Boukidis, 154 USPQ 444 (Bd. App. 1966). Thus, Yao is not distinguished from
the claimed invention on this basis.
In comparing the claimed mixed oxides as encompassed by appealed claim 1 with Yao,3 we
note that appellants do not dispute the examiner’s contention that praseodymium oxide can be one of
the “oxides of rare earth metals other than cerium” which can be present in the composite oxides of Yao
(e.g., col. 2, lines 54-55; see answer, e.g., page 4, third paragraph, first sentence), but submit that the
composite oxides of the reference are prepared as “a homogeneous mixture” of the component oxides,
with no oxide appearing only on the surface, that is “loaded on,” of the composite (brief, page 7).
Indeed, we agree with appellants’ reading of the reference as we find that Yao teaches that the
composite oxide can be precipitated from a mixture containing the constituent metal ions, followed by
calcining, or obtained through the uniform mixing of the constituent oxides, followed by palletizing and
sintering; either process forming a homogeneous composite of the oxides (e.g., col. 3, line 36, to col. 4,
line 34).
Thus, the argument presented by appellants shifts the burden to the examiner to again establish
the factual underpinning of a prima facie case of obviousness under § 103(a) in order to maintain the
grounds of rejection. See, e.g., In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992). In this case, the examiner must show that one of ordinary skill in the art would have
modified the composite oxides of Yao such that the “rear earth metal other than cerium,” such as
praseodymium oxide, would have been “loaded on” the surface of a composite first prepared from the
other oxides specified in the reference. However, the examiner did not carry this burden in merely
contending that the “loaded on” limitation “is not considered to be a patentable distinction because the
3 A discussion of Mullhaupt is not necessary to our decision. See In re Kronig, 539 F.2d 1300,
1302-04, 190 USPQ 425, 426-28 (CCPA 1976).
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