Appeal 2007-4099
Application 09/962,935
(Fed. Cir. 1990); In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219
(CCPA 1980).
As to claim 21 relating to a process limitation relating to excluding a
powder-compacting step, we remind the Appellant that the claims on appeal
are directed to a product. Thorpe, 777 F.2d at 697, 227 USPQ at 965-66
(“ 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.”). In any event, as
correctly found by the Examiner (Answer 4), “Klabunde clearly discloses
that other agglomerating techniques (e.g.[,] spraying, adhering,
centrifugation, etc.) may be utilized to form the sorbent pellets (see col. 2,
lines 44-45).”
As a rebuttal to the prima facie case, the Appellants have referred to
the Utamapanya literature (Utamapanya et al., Chem. Mater., 3:175-181
(1991)), an unknown published application, and a Rule 132 Declaration
executed by Mr. Schlegel (one of the inventors listed in this application) as
evidence of non-obviousness (Br. 14-18).
The dispositive question is, therefore, whether the Appellant's
reference to Utamapanya, the unknown published application, and the
Schlegel declaration rebuts the prima facie case established by the Examiner.
On this record, we answer this question in the negative.
Initially, we note that the Appellant has referred to Utamapanya as
teaching against using an aqueous suspension to prepare a pellet (Br. 12).
However, the Appellant has not supplied any copy of this literature evidence
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