Appeal No. 2006-1903
Application No. 10/204,306
(id.). Based on the totality of the record, we affirm the3
rejection on appeal essentially for the reasons expressed in the
Answer, as well as those reasons stated below.
OPINION
The examiner finds that the claims are written in a product-
by-process format (Answer, page 3). The examiner further cites
case law for the holding that, in product-by-process claims, it is
the patentability of the product itself which must be considered
and not that of the process steps (id.).
The examiner construes claim 16 as only requiring a titanium
silicalite article with a MFI, MEL or BEA structure (Answer,
page 4). The examiner further finds that Grosch discloses a
titanium silicalite shaped article with a MFI, MEL or BEA
structure, as well as teaching a process of preparation of this
article which employs the same starting materials and process steps
as recited in claim 16 on appeal (id.). Therefore the examiner
concludes that one would have reasonably expected the same final
product from the disclosure of Grosch as now claimed by appellants
(id.). We agree.
3Although the examiner uses § 102(a) of the statute as the
basis for this rejection on appeal, we see no reason why the
rejection could not also be based on § 102(b).
3
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