Ex Parte Gutsch et al

Board of Patent Appeals and Interferences

Jun 29, 2009

10417137 (B.P.A.I. Jun. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANDREAS GUTSCH, THOMAS HENNIG,
STIPAN KATUSIC, MICHAEL KRAMER,
GUNTHER MICHAEL, and GEOFFREY J. VARGA
___________

Appeal 2009-000249
Application 10/417,137
Technology Center 1700
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Decided:1 June 30, 2009
____________

Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-000249
Application 10/417,137

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 12, and 15. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
The invention relates to nanoscale, pyrogenically produced oxides
(Spec. 1, para. [0001]).
Claim 1 is illustrative of the subject matter on appeal:
1. A nanoscale, pyrogenically produced oxide and/or mixed oxide of
metals and/or metalloids, wherein they have a BET surface area of
between 1 m2/g and 600 m2/g and a total chloride content of less
than 0.05 wt. %.

The Examiner relies upon the following references:
Inoue 4,842,832 Jun. 27, 1989
Recasens 5,149,510 Sep. 22, 1992
Laine 5,958,361 Sep. 28, 1999
Ying 6,013,591 Jan. 11, 2000
Helble WO 94/16989 Aug. 04, 1994
Mangold EP 717,008 Jun. 19, 1996

J. Grabis et al., Preparation of Nanocrystalline YSZ Powders by the Plasma
Technique, in 33 Journal of Materials Science 723-8 (1998).

The Examiner has rejected claim 1 under 35 U.S.C. § 112, second
paragraph (Ans. 3).
The Examiner has rejected all of the claims on appeal under 35 U.S.C.
§ 103(a) as unpatentable over any one of the following five references:
Recasens, Inoue, Ying, Laine, or Helble (Ans. 3).
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The Examiner has also rejected all of the claims on appeal under 35
U.S.C. § 103(a) as unpatentable over Mangold or Grabis (Ans. 4, 5).
The Rejection Under 35 U.S.C. § 112, second paragraph
ISSUE
Appellants contend that one of ordinary skill in the art would
understand that “nanoscale” as used in the claims means a particle having a
dimension less than 100 nanometers (Br. 5)2. Appellants also contend that
the term “pyrogenically produced” would have been well recognized among
persons skilled in the art, and thus this term does not render the claim
indefinite (Br. 5, 6).
Thus, the issue is, Have Appellants shown the Examiner reversibly
erred in rejected the claims as indefinite due to the terms “nanoscale” and
“pyrogenically produced” in claim 1?
PRINCIPLES OF LAW
“The legal standard for definiteness [under the second paragraph of 35
U.S.C. § 112] is whether a claim reasonably apprises those of skill in the art
of its scope.” In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994).
The inquiry under the second paragraph of 35 U.S.C. § 112 is to
determine whether the claims set out and circumscribe a particular area with
a reasonable degree of precision and particularity. The definiteness of the
language employed in the claim must be analyzed not in a vacuum but rather
in light of the teachings of the prior art and of the particular application as it
would be interpreted by one of ordinary skill in the art. In re Moore, 439
F.2d 1232, 1235 (CCPA 1971).

2 Unless otherwise indicated, all references are to the Supplemental Brief
filed April 23, 2007.
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Application 10/417,137

It is well established that “breadth is not indefiniteness.” In re
Gardner, 427 F.2d 786, 787-88 (CCPA 1970).
ANALYSIS with FINDINGS OF FACT
It is undisputed that the that one of ordinary skill in the art would have
understood that nanotechnology involves nanoparticles which are below 100
nanometers in at least one dimension (see, Br. 5; also Exhibits 1-4 of Appeal
Brief filed March 3, 2007; Ans. 6). The Examiner contends that these
Exhibits are not persuasive since the term “nanoscale” is not specifically
defined. However, we agree with Appellants that one of ordinary skill in the
art would have recognized that in the context of their invention a
“nanoscale” metal oxide is a particle having a dimension of less than 100
nanometers (see, Br. 5).
The Examiner merely asserts that the term “pyrogenically produced”
is indefinite but offers no reasoning for his objection other than the fact that
the term is not explicitly defined in the Specification (Ans. 6). The
Examiner’s concern appears to be one of breadth rather than definiteness,
since the Examiner himself defines the term “pyrogenic” as “‘a reaction
induced by heat’” (id.). We also find that one of ordinary skill in the art
would have appreciated that a pyrogenic process, in the context of the
invention, encompasses any process wherein particles “are formed from the
gas phase at high temperature[s]”, including but not limited to a “plasma
process” as well as “flame hydrolysis” (see Ullmann’s3, p. 635, Section 6)

3 Ullmann’s Encyclopedia of Industrial Chemistry 635 (5th ed. 1993)
(hereafter “Ullmann’s”) (see Exhibit 5 supplied by Appellants in the
Evidence Appendix of the Appeal Brief filed March 3, 2007).
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Accordingly, a person of ordinary skill in the art would have
understood that a “pyrogenically produced” metal oxide particle is one
formed via a reaction induced by heat, e.g., from a gas phase at a high
temperature.
In short, the Examiner has apparently not given due regard to the
principle that claims are not to be interpreted in a vacuum but in light of
information disclosed in Appellants' Specification and knowledge available
in the prior art as understood by a person of ordinary skill in the art.
Accordingly, we reverse the rejection under 35 U.S.C. § 112, second
paragraph.
The Rejection under 35 U.S.C. § 103 based on any one of Recasens, Inoue,
Ying, Laine, or Helble
Manual of Patent Examining Procedure (MPEP) § 706.02 (8th ed. rev.
6, Sept. 2007) provides the following guidance to Examiners regarding
applying the best available prior art:
I. CHOICE OF PRIOR ART; BEST AVAILABLE
Prior art rejections should ordinarily be confined strictly
to the best available art. Exceptions may properly be made, for
example, where:
(A) the propriety of a 35 U.S.C. 102 or 103 rejection
depends on a particular interpretation of a claim;
(B) a claim is met only in terms by a reference which
does not disclose the inventive concept involved; or
(C) the most pertinent reference seems likely to be
antedated by a 37 CFR 1.131 affidavit or declaration.
Such rejections should be backed up by the best other art
rejections available. Merely cumulative rejections, i.e., those
which would clearly fall if the primary rejection were not
sustained, should be avoided.

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The rejection set forth by the Examiner of all the claims based on any
one of five alternative references does not follow this guidance. It appears
from the Examiner’s statement of the rejection that these five applied
references disclose substantially the same information (Ans. 4). Such
cumulative rejections are wasteful of the resources of the Examining Corp,
the Appellants and the Board, especially in view of the Examiner’s further
rejection of all the claims under 35 U.S.C. § 103 over either of two
additional references.
Accordingly, we vacate4 these rejections.
The Rejection under 35 U.S.C. § 103 based on Mangold or Grabis
ISSUE ON APPEAL
Appellants contend that neither Mangold nor Grabis teaches or
suggests the claimed product because the process used in each respective
reference was not the same or similar to one used to prepare the claimed
product (see, Br. 11-13). However, the Examiner contends that each
reference “suggests the instantly claimed metal oxide product having
characteristics which at least overlap that instantly claimed and/or are
pyrogenically produced” (Ans. 5), and that the burden has therefore been
shifted to Appellants to show that their claimed product is patentably distinct
(e.g., Ans. 5, 9, 10).
Accordingly, the overall issue on appeal arising from these
contentions of Appellants and the Examiner is: have the Appellants shown

4 The term “vacate” in this context means to set aside or to void (see, e.g.,
Black's Law Dictionary 1075 (abridged 6th ed. 1991)). When the Board
vacates an Examiner's rejection, the rejection is set aside and no longer
exists.
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that the Examiner reversibly erred in establishing a prima facie case of
obviousness of the claimed product based on Mangold or Grabis?
We answer this question in the negative.
FINDINGS OF FACTS (FF)
The following findings of fact are supported by a preponderance of
the evidence.
Appellants’ Specification teaches that it was known to produce
pyrogenic oxides by “flame hydrolysis of vaporisable metal chlorides or
metalloid chlorides” (see Spec. 1, para. 0002). A disadvantage of this known
process was an elevated chloride content in the product “because they may
be deacidified only very incompletely” (Spec. 1, para. [0003]).
One of ordinary skill in the art would have been aware that it was
desirable that the chloride content be minimized to prevent corrosion
problems (Spec. 1, para. [0005]).
Appellants agree that Mangold5 describes a pyrogenic process for
producing nanosized zirconium dioxide with a surface area within the
claimed range and a chlorine content less than 0.6 wt.% (see, e.g., abstract of
EP 008; Br. 11, 12).
Mangold’s chlorine content range of “less than 0.6 wt. %”
encompasses the claimed range of “less than .05 wt. %”.
Grabis describes a pyrogenic process for producing nanosized
zirconium dioxide with a surface area within the claimed range (abstract).
Grabis is silent as to the amount of chlorine content in the final
product, however, no chlorine containing reactants are described in Grabis.

5 Appellants note that this patent corresponds to US 6,524,548 assigned to
the same assignee as the present application (Br. 11).
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Appellants do not dispute the Examiner’s implicit finding that the product of
Grabis will have a chlorine content less than .05 wt. % (see, Ans. 5, Br. 13).
One of ordinary skill in the art would have appreciated that a
“pyrogenic process” encompasses the plasma flame process of Grabis6.
PRINCIPLES OF LAW
It has been well established that, for a claim to a product, the
patentability of the product defined by the claim, rather than the process for
making it must be gauged in light of the prior art. In re Brown, 459 F.2d
531, 535 (CCPA 1972). In Brown, the Court stated:
We are therefore of the opinion that when 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 on 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 . . . and then obtain prior art
products and make physical comparisons therewith.

(Id.).
Likewise it has long been held that “‘[i]f the product in the 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.’” SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d
1312, 1317 (Fed. Cir. 2006) (quoting In re Thorpe, 777 F.2d 695, [697]
(Fed. Cir. 1985)).
“Where a product-by-process claim is rejected over a prior art product
that appears to be identical, although produced by a different process, the
burden is upon the applicants to come forward with evidence establishing an

6 See, e.g., Ullmann’s, p. 635.
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unobvious difference between the claimed product and the prior art
product.” In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983).
However, Appellants’ attorney’s arguments do not take the place of
evidence in the record. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
ANALYSIS
Appellants focus their arguments on claim 1 and do not separately
argue dependent claims 12 and 15. We therefore select claim 1 to represent
each ground of rejection. 37 C.F.R. § 41.37(c)(1)(vii).
The final product claimed is a nanoscale metal oxide having a surface
area and chloride content within the claimed ranges.
It is undisputed that the product of Mangold is pyrogenically
produced, nanosized, has a surface area falling within the claimed range, and
has a chlorine content of less than 0.6 wt. % (see generally Br.).
It is well settled that a prior art reference that discloses a range
encompassing a narrower claimed range is sufficient to establish a prima
facie case of obviousness. See In re Peterson, 315 F. 3d 1325, 1329-30
(Fed. Cir. 2003). Thus, the Examiner’s position that Mangold’s product
with a chlorine content of less than 0.6 wt. % chlorine renders obvious a
product with a chlorine content of less than .05 wt% (e.g., polyethylene) is
reasonable.
Appellants’ argument that “[t]he oxide [of] the present invention” has
a chlorine content less than .05 wt. % that is “achieved without an additional
step in the production process” is not persuasive of error in the Examiner’s
rejection (Br. 12). The claim at issue is a product claim, not a process claim.
Appellants have not established that how the chlorine content of less than
.05 wt. % is achieved provides a patentable distinction in the claimed
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product. Appellants have not met this burden, since Appellants have
presented no evidence of unexpected results for the claimed range of
chlorine content7. To the contrary, Appellants admit that one of ordinary
skill in the art would have known that a low chloride content was desirable
(see FF).
With respect to the alternative rejection based on Grabis, Appellants
contend that the process of Grabis is not pyrogenic. We disagree.
It is axiomatic that claims are given their broadest reasonable
interpretation in light of the specification as they would be interpreted by
one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004).8
Claim 1 notably does not require any specific pyrogenic process.
Accordingly, even assuming that a pyrogenic process imparts “special and
unique properties” to a metal oxide particle as Appellants contend (Br. 13),
we determine that the claim plainly encompasses a metal oxide produced by
any pyrogenic process, such as the plasma process of Grabis. Indeed, the
evidence provided by Appellants exemplifies that a plasma process would
have been considered a pyrogenic process to the artisan (see Ullmann’s).

7 When patentability is predicated upon a change in a condition of a prior art
composition, such as a change in concentration or the like, the burden is on
Appellants to establish with objective evidence that the change is critical,
i.e., it leads to a new unexpected result. See, e.g., In re Woodruff, 919 F.2d
1575, 1578 (Fed. Cir. 1990).

8 Although claims are to be interpreted in light of the specification,
limitations from the specification are not to be read into the claims. See e.g.,
In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989). An applicant seeking a
narrower construction must either show why the broader construction is
unreasonable or amend the claim to expressly state the scope intended. In re
Morris, 127 F.3d 1048, 1057 (Fed. Cir. 1997).
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Thus, the Examiner’s position that the process of Grabis is a pyrogenic
process is reasonable (Ans. 10).
For all these reasons, we are in agreement with the Examiner that the
product of claim 1 appears to be substantially identical to Grabis’ metal
oxide product.
In summary, the substantial identity of the resultant end product as
claimed with the product described in either of Mangold or Grabis indicates
that each reference teaches a product not patentably distinct to that claimed
in claim 1. Thus, the burden was properly shifted to Appellants to prove that
the claimed product is patentably different than the prior art products of
Mangold or Grabis. Marosi, 710 F.2d at 803. See also In re Thorpe, 777
F.2d at 697; In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
Appellants have not presented evidence sufficient to refute the
Examiner’s finding that there is no patentable difference between the
claimed product and those of the applied prior art. Instead, Appellants
provide unsupported attorney argument as to a skilled artisan’s conclusions
regarding the teachings of these references (Br. 11-13). Attorney argument
is no substitute for objective evidence against the Examiner’s finding.
Pearson, 494 F.2d at 1405.
Therefore, Appellants have not shown that the Examiner erred in
rejecting the claims as obvious over Mangold or Grabis.
CONCLUSION
Appellants have shown that the Examiner reversibly erred in
determining that one of ordinary skill in the art would not understand the
metes and bounds of claim 1.
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Appellants have not shown that the Examiner reversibly erred in
establishing a prima facie case of obviousness of the claimed product based
on Mangold or Grabis; that is, Appellants have provided no evidence to
show that the product as claimed is structurally unobvious from the product
described in Mangold or Grabis.
ORDER
The Examiner’s rejection of claims 1, 12 and 15 under 35 U.S.C.
§ 112, second paragraph is reversed.
The Examiner’s rejections of claims 1, 12 and 15 under 35 U.S.C.
§ 103(a) as unpatentable over any one of Recasens, Inoue, Ying, Laine,
Helble are vacated.
The Examiner’s rejection of claims 1, 12 and 15 under 35 U.S.C.
§ 103(a) as unpatentable over Mangold or Grabis is affirmed.
We affirm the Examiner’s decision.

No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a).
AFFIRMED

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SMITH, GAMBRELL & RUSSELL
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