Appeal 2007-2124
Application 10/175,515
“inorganic layered hydroxide compound” to read on the tungsten compound
described in Ehrhardt (Suppl. Br. 8-9). We agree with Appellants that the
Examiner has not given the words in claim 1 their broadest reasonable
interpretation.
The Examiner argues that Ehrhardt’s teaching of tungsten trioxide
dissolved in a base, such as sodium hydroxide or a similar source of
hydroxyl ions (Answer 5-6; Ehrhardt, col. 3, ll. 52-58; Findings of Fact 4, 5)
would have been recognized by the person of ordinary skill in the art as an
“inorganic layered hydroxide compound containing tungsten-188” (Answer
6).
The Examiner appears to have presumed that any tungsten-188
compound comprising a hydroxide is an inorganic layered hydroxide.
However, we have interpreted the claimed compound in view of the
Specification and its ordinary usage by persons of skill in the art to require a
specific structure: a mixture of at least two cations with surrounding shells
of bound hydroxyl groups. The Examiner does not explain how Ehrhardt’s
tungsten trioxide solution, or any other tungsten compound disclosed in
Ehrhardt, meets this limitation or could be modified to meet it.
Ehrhardt makes no mention of inorganic layered hydroxides. It is the
Examiner’s burden to provide reason to believe that the claimed subject
matter may be an inherent characteristic of the prior art. See In re Thrift,
298 F.3d 1357, 1365, 63 USPQ2d 2002, 2007 (Fed. Cir. 2002); In re
Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997); In
re Swinehart, 439 F.2d 210, 213, 169 USPQ 226, 228 (CCPA 1971). In this
case, it is the Examiner’s burden to provide evidence or some logic to
explain why it is reasonable to presume that Ehrhardt’s tungsten compound
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