Appeal 2007-4098
Application 09/962,887
shows forming powder from “hydrating 99.99 % ultrapure metal oxide with
excess distilled deionized water, heating it under a nitrogen flow forming
metal hydroxide, removing the excess of water in the microwave” (col. 9, ll.
58-65). The powder prepared in this manner, according to Klabunde, is
compacted and activated (cols. 10 and 11, Table 5).
Thus, it is incumbent upon the Appellants to demonstrate that the
claimed pellet prepared from an aqueous suspension is not either identical or
substantially identical to the pellet taught by Klabunde. Rather than
demonstrating the difference between the claimed and prior art pellets, the
Appellants only argue that Klabunde does not teach preparing pellets from
an aqueous suspension (Br. 10). In so doing, the Appellants have failed to
recognize that the claims on appeal are directed to a unit containing an
adsorbent/catalyst pellet, not a process for making the same. In re Thorpe,
777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985) (“ The patentability
of a product does not depend on its method of production….If the product in
a product-by-process claim is the same as or obvious from a product of the
prior art the claim is unpatentable even though the prior product was made
by a different process.”). On this record, we find that the Appellants have
not relied on any evidence to rebut the prima facie case of anticipation
established by the Examiner (Br. 9-11)4.
4 Even if we must consider the evidence relied upon by the Appellants in
rebutting the Examiner’s § 103 rejection in the context of the Examiner’s
§ 102(b) rejection, we are not convinced that the Appellants have
demonstrated that the pellets encompassed by the claims on appeal are
patentably different from those taught by Klabunde for the factual findings
set forth in the Answer and infra.
6
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