Ex parte Chun
| Decision Date | 30 January 2002 |
| Docket Number | 631,Application 08/711,Appeal 1998-1584 |
| Parties | Ex parte WOSSANG CHUN, GEORGE W. GRAHAM and ROBERT W. McCABE |
| Court | Patent Trial and Appeal Board |
This Opinion is Not binding Precedent of the Board.
ON BRIEF
Before GARRIS, WARREN and PAWLIKOWSKI, Administrative Patent Judges.
DECISION ON APPEAL AND OPINION
WARREN, ADMINISTRATIVE PATENT JUDGE.
We have carefully considered the record in this appeal under 35 U.S.C. § 134, including the opposing views of the examiner, in the answer, and appellants, in the brief, and based on our review, find that we cannot sustain the rejection of appealed claims 1 through 6 under 35 U.S.C § 103(a) as being unpatentable over Yao et al. (Yao) in view of Mullhaupt, or the rejection of appealed claims 7 through 12 under 35 U.S.C. § 103(a) as being unpatentable over Horiuchi et al. (Horiuchi) in view of Yao.[1], [2] We agree with appellants that the examiner has failed to make out a prima facie case of obviousness with respect to both grounds of rejection.
A prima facie case of obviousness is established by showing that some objective teaching, suggestion or motivation in the applied prior art taken as a whole and/or knowledge generally available to one of ordinary skill in the art would have led that person to the claimed invention as a whole, including each and every limitation of the claims without recourse to the teachings in appellants' disclosure. See generally, In re Rouffet, 149 F.3d 1350, 1358, 47 U.S.P.Q.2d 1453, 1458 (Fed. Cir. 1998); Pro-Mold and Tool Co. v. Great Lakes Plastics Inc. 75 F.3d 1568, 1573, 37 U.S.P.Q.2d 1626, 1629-30 (Fed. Cir. 1996); In re Vaeck, 947 F.2d 488, 493, 20 U.S.P.Q.2d 1438, 1442 (Fed. Cir. 1991); In re Fine, 837 F.2d 1071, 1074-76, 5 U.S.P.Q.2d 1596, 1598-1600 (Fed. Cir. 1988); In re Dow Chem. Co., 837 F.2d 469, 473, 5 U.S.P.Q.2d 1529, 1531-32 (Fed. Cir. 1988).
It is readily apparent that the plain language of appealed claims 1 and 7, when considered in light of the written description in the specification as interpreted by one of ordinary skill in this art, see, e.g., In re Morris, 127 F.3d 1048, 1054-55, 44 U.S.P.Q.2d 1023, 1027 (Fed. Cir. 1997), simply requires that the praseodymium oxide must be "loaded onto" the "surface" of either a cerium oxide or a cerium-zirconium oxide "support material" in forming the claimed mixed oxide. This is set forth as a specific step in the method of claim 7. In claim 1, this product-by-process limitation characterizes the product as one in which the praseodymium oxide is deposited onto the surface of the previously formed specified "support material" and thus is included only on that surface. See, e.g., In re Thorpe, 777 F.2d 695, 697, 227 U.S.P.Q. 964, 966 (Fed. Cir. 1985). We note here that while we agree with appellants' argument that hafnium oxide is an "indispensable" component of the composite oxide of Yao (brief, pages 6-7), we are of the opinion that appellants have not convincingly established that this oxide would be excluded from claims 1 and 7 through the use of the transitional phrase "consisting essentially of" as this term would be interpreted in light of their specification. Indeed, we find no disclosure in appellants' specification which establishes that hafnium oxide would materially affect the basic and novel characteristics of the claimed mixed oxides. See Morris, 127 F.3d at 1055-56, 44 U.S.P.Q.2d at 1029; see also PPG Industries Inc. v. Guardian Indus. Corp., 156 F.3d 1351, 1354-57, 48 U.S.P.Q.2d 1351, 1353-56 (Fed. Cir. 1998) ); In re Herz, 537 F.2d 549, 551-52, 190 U.S.P.Q. 461, 463 (CCPA 1976); cf. Ex parte Boukidis, 154 U.S.P.Q. 444 (Bd. App. 1966). Thus, Yao is not distinguished from the claimed invention on this basis.
In comparing the claimed mixed oxides as encompassed by appealed claim 1 with Yao, [3] we note that appellants do not dispute the examiner's contention that praseodymium oxide can be one of the "oxides of rare earth metals other than cerium" which can be present in the composite oxides of Yao (e.g., col. 2, lines 54-55; see answer, e.g., page 4, third paragraph, first sentence), but submit that the composite oxides of the reference are prepared as "a homogeneous mixture" of the component oxides, with no oxide appearing only on the surface, that is "loaded on," of the composite (brief, page 7). Indeed, we agree with appellants' reading of the reference as we find that Yao teaches that the composite oxide can be precipitated from a mixture containing the constituent metal ions, followed by calcining, or obtained through the uniform mixing of the constituent oxides, followed by palletizing and sintering; either process forming a homogeneous composite of the oxides (e.g., col. 3, line 36, to col. 4, line 34).
Thus, the argument presented by appellants shifts the burden to the examiner to again establish the factual underpinning of a prima facie case of obviousness under § 103(a) in order to maintain the grounds of rejection. See, e.g., In re Oetiker, 977 F.2d 1443, 1445, 24 U.S.P.Q.2d 1443, 1444 (Fed. Cir. 1992). In this case, the examiner must show that one of ordinary skill in the art would have modified the composite oxides of Yao such that the "rear earth metal other than cerium," such as praseodymium oxide, would have been "loaded on" the surface of a composite first prepared from the other oxides specified in the reference. However, the examiner did not carry this burden in merely contending that the "loaded on" limitation "is not considered to be a patentable distinction because the resulting composition is essentially the same, metal oxides in combination with the desired support" (answer, page 11).
Indeed it is not apparent that there is structural similarity between the claimed mixed oxide and the composite oxide of Yao, and to the...
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