Appeal 2007-4101
Application 09/962,972
[T]he lack of physical description in a product-by-process claim
makes determination of the patentability of the claim more
difficult, since in spite of the fact that the claim may recite only
process limitations, it is the patentability of the product claimed
and not of the recited process steps which must be
established…. [W]hen the prior art discloses a product which
reasonably appears to be either identical with or only slightly
different than a product claimed in a product-by-process claim,
a rejection based alternatively one either section 102 or section
103 of the statute is eminently fair and acceptable. As a
practical matter, the Patent Office is not equipped to
manufacture products by the myriad of processes put before it
and then obtain prior art products and make physical
comparisons therewith.
Consistent with Brown, the Examiner has demonstrated that the pellet taught
or suggested by Klabunde “reasonably appears to be either identical with or
only slightly different than” the claimed pellet. As indicated supra, there is
no dispute that Klabunde describes a pellet useful for a fluid medium, having
the claimed ingredients, particle size and BET surface. Klabunde also
teaches preparing pellets in methods similar to that claimed (cols. 4-11,
Examples 1-3). Klabunde’s Examples 1 and 2 show forming powder from
an aerogel and pressing the powder in a small hydraulic press at 1000 and
2000 psi to make spherical pellets having a diameter of 12 mm (col. 4-9).
The pellets formed are then activated at 500oC (Klabunde, cols. 6 and 7).
Klabunde’s Example 3 also 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).
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