Appeal No. 2006-1903
Application No. 10/204,306
Grosch anticipates the claimed product within the meaning of § 102,
and appellants have not sufficiently rebutted this belief with
persuasive arguments and evidence. Therefore we affirm the
rejection of claims 16 and 17 under 35 U.S.C. § 102(a) over Grosch.
OTHER ISSUES
In view of our interpretation of the process limitations
discussed above, including the meaning of “comprising,” the
examiner and appellants should reconsider the patentability of
process claims 1-12 and 18 in view of the disclosure and teachings
found in Grosch. The examiner should also note that Grosch teaches
that a calcination step is employed before shaping “to improve the
catalytic behavior” of the resulting titanium silicalite product
(col. 2, ll. 51-60). Omission of a step with its corresponding
loss of function has been held to be prima facie obvious. See In
re Wilson, 377 F.2d 1014, 1017, 153 USPQ 740, 742 (CCPA 1967); and
In re Hamilton, 404 F.2d 1388, 1390, 160 USPQ 199, 201 (CCPA 1969).
SUMMARY
The rejection of claims 16 and 17 under 35 U.S.C. § 102(a)
over Grosch is affirmed.
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