Ex Parte Bottcher et al - Page 5

                Appeal 2007-0736                                                                                
                Application 10/480,239                                                                          
                       If The Examiner has made a prima facie case of obviousness under §                       
                103, have Appellants rebutted that case by demonstrating unexpected results                     
                compared to the closest prior art?                                                              

                                           FINDINGS OF FACT3                                                    
                Claim Interpretation                                                                            
                       1.  The language “wherein the ruthenium catalyst is obtained by                          
                treating a support material based on amorphous silicon dioxide . . . one or                     
                more times with a halogen-free aqueous solution of a low molecular weight                       
                ruthenium compound and subsequently drying the treated support material at                      
                below 200°C, reducing the solid obtained in i) by means of hydrogen at from                     
                100 to 350°C, where step ii is carried out directly after step i)” is a product-                
                by-process limitation thereby shifting the burden to Appellants to show an                      
                unobvious difference between their catalyst and that of the prior art.                          
                (Answer 4.)                                                                                     
                       2.  The claim language does not require more than a single cycle or                      
                “pass.”  (Compare Spec. 18 showing data for multiple passes.)                                   
                       3.  The claim language does not exclude ruthenium chloride and other                     
                such halogenated “low molecular weight ruthenium compound[s]” but rather                        
                merely requires “a halogen-free aqueous solution.”  (See, e.g., Spec. 6, ll.                    
                16-27.)                                                                                         
                       4.  The claim language does not require any particular level of                          
                hydrogenation of the aromatic groups or of retention of the epoxy groups.                       
                       5.  The claim language does not exclude additional process steps such                    
                as heating the amorphous silicon dioxide prior to treating it “with a halogen-                  
                                                                                                               
                3 A Finding of Fact is hereafter abbreviated “FF.”                                              

                                                       5                                                        

Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  Next

Last modified: September 9, 2013