Appeal No. 1998-1584
Application 08/711,631
resulting composition is essentially the same, metal oxides in combination with the desired support”
(answer, page 11).
Indeed, it is not apparent that there is structural similarity between the claimed mixed oxide and
the composite oxide of Yao, and to the extent that the examiner is relying on such structural similarity in
contending that “a composition formed as a mixture of the support materials and metal oxides is
considered to comprise similar properties to the composition wherein a support is ‘loaded’ with metal
oxides” (answer, page 11), we cannot find the requisite evidence necessary to establish this position in
any reference of record and our search for the same has not been aided by the examiner. See In re
Jones, 958 F.2d 347, 349-51, 21 USPQ2d 1941, 1943-44 (Fed. Cir. 1992) (“Conspicuously missing
from this record is any evidence, other than the PTO’s speculation (if it be called evidence) that one of
ordinary skill in the herbicidal art would have been motivated to make the modifications of the prior art
salts necessary to arrive at the claimed . . . salt.”); In re Dillon, 919 F.2d 688, 692-93, 16 USPQ2d
1897, 1901 (Fed. Cir. 1990)(in banc) (“This court . . . reaffirms that structural similarity between
claimed and prior art subject matter, proved by combining references or otherwise, where the prior art
gives reason or motivation to make the claimed compositions, creates a prima facie case of
obviousness, and that the burden (and opportunity) then falls on an applicant to rebut that prima facie
case.”); In re Grabiak, 769 F.2d 729, 731-32, 226 USPQ 870, 872 (Fed. Cir. 1985) (“[W]e have
concluded that generalizations should be avoided insofar as specific chemical structures are alleged to
be prima facie obvious one from the other. . . . [I]n the case before us there must be adequate support
in the prior art for the ester/thioester change in structure, in order to complete the PTO’s prima facie
case and shift the burden of going forward to the applicant.”); In re Payne, 606 F.2d 303, 315, 203
USPQ 245, 254-55 (CCPA 1979) (“An obviousness rejection based on similarity in chemical structure
and function entails the motivation of one skilled in the art to make a claimed compound, in the
expectation that compounds similar in structure will have similar properties.”).
Similarly, with respect to the method of appealed claim 7, while Horiuchi does indeed disclose
processes in which praseodymium oxide is “loaded onto” zirconium oxide as the refractory inorganic
oxide support (e.g., cols. 3-4), we must agree with appellants that Horiuchi would not have suggested
to one of ordinary skill in this art to use a cerium oxide or a cerium-zirconium oxide as a refractory
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