Appeal No. 2004-1092 Page 7
Application No. 10/014,425
the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation.”).
In light of the above, we are not persuaded by appellants’
argument that obtaining a particle size within the claimed range
is not inherently achieved by following the teachings of Jin. As
noted by the examiner (answer, page 5) and further amplified
above, the examiner’s § 103(a) rejection is not based on an
inherency theory but rather on the obviousness of the claimed
product composition based on the teachings of Jin as they would
be understood by one of ordinary skill in the art.
Appellants’ arguments with respect to differences in making
the claimed product over the prior art method of making their
catalyst have not been substantiated with any persuasive evidence
establishing a patentable difference in the product made, which
product is the subject of this appeal. Appellants rely on a
Hartmann et al. Declaration2 that was submitted in parent
application No. 08/528,044, now U.S. Patent No. 6,406,532 and
several excerpts from Ullmann’s Encyclopedia of Industrial
2 A copy of the declaration was not located in the present
application file. Consequently, prior to final disposition of
this application the examiner should require appellants to submit
a copy of the executed declaration for the record of this
application file.
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