Appeal No. 2004-1092 Page 5
Application No. 10/014,425
the precipitate with deionized water, drying the
precipitate at 100°C for 20-30 hours, and then
calcining the dried precipitate in air at 500°C for 2-3
hours (experimental section, page 3208). However, as
in the appellants’ flame hydrolysis preparation process
(specification, page 1, line 31 to page 2, line 7 ...),
Hattori [Jin] describes the coprecipitation method as
reacting an iron salt with titanium tetrachloride and
then treating the resulting product at elevated
temperatures to yield an iron oxide-titanium oxide
binary oxides having the same composition and the same
surface area as recited in appealed claim 2.
...
Although Hattori [Jin] uses a different preparation
method, the final catalyst product identified as
“Fe2O3-TiO2(1/9)” possesses the same composition and the
same surface area as the “flame hydrolytically
prepared” product recited in appealed claim 2. Under
these circumstances, we think it is reasonable to
conclude that the prior art product is
indistinguishable from the appellants’ claimed product
and that it is appropriate to shift the burden of proof
to the appellants to show a patentable difference.
Best, 562 F.2d at 1255, 195 USPQ at 433-34; In re
Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed.
Cir. 1990) (reaffirming the principle that similarities
in terms of reactants, reaction conditions, and
properties amount to a prima facie case of
unpatentability). The fairness in the shifting of the
burden of proof here would be evidenced by the PTO’s
inability to conduct laboratory experiments. Best, 562
F.2d at 1255, 195 USPQ at 433-34.
The representative appealed claim 2 at issue here differs
from the claim 2 that was before the prior Board panel,
particularly by requiring that the particle size of the claimed
powder range between 5-100 nm. Regarding that further
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