Ex Parte Hibi et al

Patent Trial and Appeal Board

Dec 23, 2013

10932148 (P.T.A.B. Dec. 23, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT AND TRIAL APPEAL BOARD
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Ex parte TAKUO HIBI, HIROAKI ABEKAWA, KOHEI SEKI,
TATSUYA SUZUKI, TETSUYA SUZUTA,
KIYOSHI IWANAGA, and TAKAHIRO OIZUMI
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Appeal 2012-009699
Application 10/932,148
Technology Center 1700
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Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and
LINDA M. GAUDETTE, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appeal 2012-009699
Application 10/932,148

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Appellants timely request1 reconsideration of our Decision2 affirming
the rejections of claims 1, 24-26, 28, and 31-33. We have considered
Appellants’ Request but we deny the requested relief.
Appellants argue the Board used an incorrect understanding of the
term titanium oxide and, therefore, ignored the teachings of Izutsu. (Request
2).
The teachings of Izutsu have not been ignored due to imprecise
nomenclature.3 We recognized that Izutsu describes the stabilization of
anatase titanium dioxide. (Decision 6). The discussion of Izutsu at p. 855
(App. Br. 14) does not indicate that rutile titanium dioxide does not have any
catalytic properties. This discussion provides a preference for the properties
of the anatase phase for catalytic activity. That is, Izutsu is discussing the
irreversible transformation of the anatase phase to rutile phase and the
disadvantages associated therewith. Izutsu specifically states “[f]or many
applications this transformation is not favoured, for two main reasons: (1)
anatase has distinctly better catalytic properties than rutile, and (2) this
transformation always results in a dense (non-porous) rutile phase, which is
not useful as a catalyst.” (Izutsu, 855, emphasis added.) Contrary to
Appellants' argument (Request 2-3), the discussion of Izutsu does not
provide a generalized teaching. As noted by the Examiner (Ans. 10), Izutsu

1 Request for Reconsideration/Rehearing filed November 26, 2013
(“Request”).
2 Decision on Appeal mailed September 26, 2013 (cited henceforth as
“Op.”).
3 It is noted that titanium oxide (TiO) is a stable compound. When utilizing
the term “titanium oxide” to refer to titanium dioxide (TiO2) the
nomenclature should specify titanium (IV) oxide.
Appeal 2012-009699
Application 10/932,148

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does not describe the applications for which the rutile phase is unsatisfactory
or that the rutile phase is not useful for oxidizing hydrogen chloride. On the
other hand, Abe expressly discloses rutile titanium oxide is suitable for use
as a catalyst or a carrier for an oxidation process. (Col. 5, ll. 3-11).
Appellants repeat the argument that Abe teaches away from using the
rutile phase of titanium oxide. (Request 2).4 We do not find these repeated
arguments persuasive for the reasons presented in the Decision. (Decision
5-6).
Appellants argue the Board overlooked the evidence presented in Mr.
Seki’s Declarations. (Request 5-6). The Declaration evidence was
considered and found not to be persuasive for the reasons presented by the
Examiner and presented in the Decision. (Decision 6-8).
In conclusion, based on the foregoing, Appellants’ Request is granted
to the extent that we have reconsidered our Decision, but is denied with
respect to making changes to the final disposition of the rejections therein.
This Decision on the Request for Rehearing incorporates our
Decision, mailed September 26, 2013, and is final for the purposes of
judicial review. See 37 C.F.R. § 41.52(a)(1).

4 App. Br. 10-15.
Appeal 2012-009699
Application 10/932,148

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TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
DENIED

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