Appeal No. 2003-1529
Application No. 08/499,442
examiner’s rejection of claims 3-5, 7, 17, and 20-26 under
35 U.S.C. § 102(b) over Bauer.
B. The Rejection under § 103(a) over Bauer
The examiner finds that Bauer does not specifically disclose
the method of preparation of the alumina, as recited in claim 6 on
appeal, nor the specific surface velocity as recited in claim 8 on
appeal (Answer, page 4). Nonetheless, the examiner concludes that
the alumina product is the same or similar regardless of its method
of preparation, and the modification of the surface velocity would
have been well within the ordinary skill in the art absent a
showing of unexpected results (id.).
Appellant repeats the arguments against Bauer as discussed
above (Brief, page 11), while merely stating that the limitations
of claims 6 and 8 on appeal are “nowhere disclosed in any cited
reference.” Brief, page 12. This argument is not well taken since
the examiner has admitted that Bauer does not specifically recited
the limitations of claims 6 and 8. Appellant has not addressed
the product-by-process format of claim 6, even as included in
the process claim 3, and has failed to point out how the product
alumina differs from the alumina of Bauer. See In re Wertheim,
541 F.2d 257, 271, 191 USPQ 90, 103 (CCPA 1976)(it is the
patentability of the product defined by product-by-process claims
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