Appeal No. 2006-1903
Application No. 10/204,306
Appellants argue that an important difference between the
subject matter of claim 16 on appeal and Grosch is the claimed step
(c) which requires drying the titanium silicalite at a temperature
below the decomposition temperature of the template compound, which
step is missing from the Grosch disclosure (Brief, page 4). This
argument is not well taken for several reasons. First, appellants
are arguing the differences in process steps while the claims are
drawn to a product. See In re Wertheim, 541 F.2d 257, 271, 191
USPQ 90, 103 (CCPA 1976)(it is the patentability of the product
which must be determined in product-by-process claims, and not the
process for making them, in light of the prior art). Secondly,
appellants are incorrect since Grosch specifically discloses and
exemplifies a drying step for the titanium silicalite at a
temperature of 110°C. before the solid is shaped with a binder
(e.g., see Example 1, col. 4, ll. 60-62). Appellants teach that
the drying temperature ranges from preferably 50 to less than
400°C. (specification, page 3, ll. 25-31, although the Examples on
pages 12-15 are silent as to any spray drying temperature).
Therefore, although Grosch does not specifically teach a drying
temperature lower than the decomposition temperature of the
template compound, there would have been a reasonable belief that
the drying temperature taught by Grosch would have been within the
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007