Appeal No. 2003-0366
Application 09/349,759
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
claims 15 and 36 require that the method of converting non-aromatic hydrocarbons to aromatic
hydrocarbons is conducted with a silylated, acid leached zeolite composition wherein the zeolite
is acid leached then silylated, and a steam treated, silylated zeolite composition wherein the
zeolite is silylated then steam treated, respectively. The product-by-process format thus used to
characterize the zeolite catalyst compositions must be given weight in applying prior art. See
generally, In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985).
We determine that the examiner has done so in pointing out that Beck discloses zeolite
catalysts for the same method, as evinced by the Cattanach references, which are silylated and
then acid leached or steam treated and then silylated, that is, prepared in the reverse order of
steps set forth in appealed claims 15 and 36, and there is no quarrel between the parties in this
respect (answer, page 3; brief, pages 4-5).
Therefore, the issues are whether the examiner has established a prima facie case of
obviousness based on such facts, and if so, whether the evidence in the specification as relied on
by appellants in the brief constitutes sufficient evidence of nonobviousness to out weight the
evidence of obviousness.
The examiner takes the position that one of ordinary skill in the art would have expected
that zeolite catalysts “prepared in any sequence of acid-leaching, steaming, and silylating [as
shown in Beck] would [have] similar properties” to those described by Beck for the zeolite
catalysts prepared by the sequence of steps shown in the reference, including the conversion of
non-aromatic hydrocarbons to aromatic hydrocarbons for which Beck incorporates the teachings
of the Cattanach references (answer, pages 3-4). .
We find that Beck acknowledges that it was known in the art to modify zeolite catalysts
with respect to aluminum and silicon (cols. 1-3). Beck would have disclosed to one of ordinary
skill in this art a process wherein an organosilicone compound is first used to deposit siliceous
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