Appeal 207-1263
Application 10/480,198
Appellants contend that underlying all of the rejections is the
Examiner’s presumption that the ratio recited in the claims is a characteristic
of the starting materials rather than the claimed dielectric (Br. 9).
Appellants contend that none of the references teach the claimed ratio or
teach how it is possible to achieve such a ratio (Br. 7-8).
Appellants contend that all of the references disclose a one-step
calcination process while the claimed product is formed after a two-step
calcination (Br. 6, 8-9). Appellants further contend that the Examiner has
not shown any evidence of a motivation to add a second calcination step to
the prior art process (Br. 8-9).
Appellants contend that the Examiner’s speculation is incorrect since
unexpected results have been shown for products produced by a two-step
calcination process, citing the comparison of samples 11 vs. 16 and samples
37 vs. 48 as shown in the Specification (Br. 6-7, 10-13; Reply Br. 1-3).
The Examiner contends that, although none of the references disclose
the claimed ratio, the claimed composition reasonably appears to be
substantially the same as the prior art composition, and the burden falls to
Appellants to prove by tangible evidence that the prior art does not
necessarily possess the claimed characteristic (Answer 4).
The Examiner contends that, although the references do not disclose a
two-step calcination process, the patentability of a product does not depend
on its method of production and Appellants have not shown that the claimed
ratio is not possessed by the prior art (Answer 4).
Fukui and Fujii are based on § 102(a or e) while the rejection over Kojima is
based on § 102(b).
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