Appeal 2007-1375
Application 10/327,300
ISSUES ON APPEAL
Claims 33-34 stand rejected under 35 U.S.C. § 102(b) as anticipated
by or, in the alternative, under 35 U.S.C. § 103(a) as unpatentable over Ye in
view of Maldonado and Hammerschmidt (Answer 5).2
Appellants contend that Ye does not expressly or inherently disclose
the claimed weight % of metallic particles or the pore volume (Br. 8; Reply
Br. 3).
Appellants contend that the claimed “at least about 10 wt.%” does not
read on Ye’s disclosed 5 wt.%, and there is no basis in fact or technical
reasoning to support the Examiner’s “inherency” assertion regarding the
pore volume (Reply Br. 4-6).
Appellants contend that there is no suggestion or motivation to
combine Ye and Maldonado since they are directed to completely different
chemistries, and, even if properly combined, these references fail to disclose
or suggest all the claim limitations (Br. 11-12; Reply Br. 7-8).
The Examiner contends that Ye discloses mean particle sizes of
2.7 nm, which reads on “about 2.5 nm” as claimed, and the disclosure of
5 wt.% of platinum particles reads on the claim limitation of “at least about
10 wt.%” (Answer 10). The Examiner also contends that the pore volume
2 Although not explicitly stated by the Examiner, it implicitly appears that
this rejection is actually two rejections, the first rejection being based on
§ 102(b) over Ye alone, where the second rejection is based on § 103(a) over
Ye in view of Maldonado and Hammerschmidt. See the Brief, page 3; the
Reply Brief, page 2; and the Answer, pages 10-12. Accordingly, we will
consider this rejection as argued by both Appellants and the Examiner.
3
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