Ex Parte Domen et al

Board of Patent Appeals and Interferences

Jul 26, 2012

10533567 (B.P.A.I. Jul. 26, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/533,567 05/03/2005 Kazunari Domen TAN-351 4563
62479 7590 07/26/2012
HAHN & VOIGHT PLLC
1012 14TH STREET, NW
SUITE 620
WASHINGTON, DC 20005
EXAMINER
SMITH, JENNIFER A
ART UNIT PAPER NUMBER
1731
MAIL DATE DELIVERY MODE
07/26/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KAZUNARI DOMEN and MICHIKAZU HARA
____________

Appeal 2010-008469
Application 10/533,567
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, PETER F. KRATZ, and
ROMULO H. DELMENDO, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s second or subsequent rejection of claims 1, 3, 5, 10, and 12.
We have jurisdiction pursuant to 35 U.S.C. § 6.

Appeal 2010-00846
Application 10/533,567

2
Appellants’ claimed invention is directed to a HTixNby O5 solid acid
catalyst having a Ti/Nb atomic ratio z of 1.2 < z < 1.4, wherein 1.1 < x < 1.2
and 0.9 > y > 0.8, obtained by using polyanion nano.sheet comprising
lamellar metal oxide layers of titanium niobate containing alkali metal ion as
a starting material.
Claim 1 is illustrative and reproduced below:
1. A solid acid catalyst represented by HTixNbyO5, wherein x is
1.1y>0.8, having a Ti/Nb atomic ratio z of 1.21 y > 0.8. Rather, the Examiner has merely
conclusively asserted that Takagaki discloses a range of 0.818 to 5 for z
without adequate explanation of how those asserted z values relate to the
claimed HTixNby O5 catalyst ,wherein 1.1 < x < 1.2 and 0.9 > y > 0 (Ans. 3-5
and 7-10). In this regard, the Examiner’s obviousness position appears to be
premised on an incompletely presented analysis of the teachings of Takagaki
and/or miscalculations associated with the asserted range of 0.818 to 5 for z
(Br. 13-14). As stated in KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007), “‘[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness’” (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Here, the Examiner has provided merely conclusory statements that
the prior art broadly suggests the limitations of the appealed claims based on
an incorrect or incompletely substantiated assertion of an overlapping range
of the ratio of niobium and titanium for a corresponding catalyst being
disclosed by Takagaki. The Examiner has not satisfactorily explained how
one of ordinary skill in the art would have been reasonably led by Takagaki
Appeal 2010-00846
Application 10/533,567

4
to arrive at a solid acid catalyst that entirely corresponds with Appellants’
claim 1 catalyst. As for the second stated rejection of certain dependent
claims, the Examiner has not articulated how Hara would make up for the
aforementioned deficiency in the base rejection.
Thus, the record indicates that the Examiner used impermissible
hindsight in rejecting the Appellants’ claims. See also In re Warner, 379
F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section 103 clearly
must rest on a factual basis, and these facts must be interpreted without
hindsight reconstruction of the invention from the prior art”). Accordingly,
we do not sustain either of the Examiner’s rejections.

CONCLUSION/ORDER
The Examiner’s decision to reject the appealed claims is reversed.

REVERSED

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