Ex Parte Hofstadt et al

Board of Patent Appeals and Interferences

Apr 14, 2010

10513041 (B.P.A.I. Apr. 14, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte OTTO HOFSTADT, MICHAEL HESSE, GOTZ-PETER
SCHINDLER, KLAUS HARTH, and FALK SIMON
____________

Appeal 2010-000041
Application 10/513,041
Technology Center 1700
____________

Decided: April 14, 2010
____________

Before EDWARD C. KIMLIN, CHUNG K. PAK, and TERRY J. OWENS,
Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

Appeal 2010-000041
Application 10/513,041

DECISION ON APPEAL
This is an appeal from the final rejection of claims 8-13. Claim 8 is
illustrative:
8. A catalyst comprising one or more elements selected from the
group consisting of the elements of transition metal groups VIII
and VI and optionally one or more further elements selected
from the group consisting of the elements of main groups I and
II, transition metal group III including the lanthanides, main
group III, rhenium, zinc and tin on a catalyst support, wherein
said catalyst support is prepared by mixing zirconium dioxide
powder with a monomeric, oligomeric or polymeric
organosilicon compound as a binder, optionally a pore former,
optionally an acid, water and optionally further additives to
form a kneadable composition, homogenizing the composition,
shaping the composition to produce shaped bodies, drying and
calcining.

The Examiner relies upon the following reference in the rejection of
the appealed claims:
Hansford 3,159,569 Dec. 1, 1964
Appellants’ claimed invention is directed to a catalyst comprising one
or more of the recited metals on a catalyst support. The support is prepared
by mixing zirconium dioxide powder with an organo-silicon compound,
homogenizing and shaping the composition to produce a shaped body, and
calcining the body. According to Appellants, the claimed catalyst is well
suited for the dehydrogenation of alkanes based on its high mechanical
stability and particular pore structure.
Appealed claims 8-13 stand rejected under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as being
unpatentable over Hansford.
2
Appeal 2010-000041
Application 10/513,041

We have thoroughly reviewed the respective positions advanced by
Appellants and the Examiner. In so doing, we find ourselves in agreement
with Appellants that the Examiner’s rejection is not sustainable.
The catalyst support is recited in product-by-process language. The
Examiner errors, however, in stating that “the process limitations in the
claims have no bearing on the patentability of the claimed product” (Ans. 4,
first para.). However, although it is well settled that the patentability of a
product does not depend on its method of production,1 it is the Examiner’s
burden, in the first instance, to provide a factual basis for the conclusion that
the prior art product reasonably appears to be either identical with or only
slightly different than the product claimed in a product-by-process claim.2
In the present case, the Examiner has not provided the requisite
factual basis for the statement that “the disclosed catalyst [of Hansford] has
the same composition and catalytic structure as being claimed” (Ans. 4, last
sentence). In particular, the Examiner has failed to provide any
correspondence between the catalyst preparation method of Hansford and
the process recited in the appealed claims to support a conclusion that the
catalyst produced by the methods of Hansford and Appellants are
substantially the same. In the absence of such an established
correspondence, the burden is not shifted to Appellants to prove that the
catalyst presently claimed is patentability distinct from the catalyst disclosed
by Hansford.
Notwithstanding this lack of burden, Appellants have proffered
objective evidence to demonstrate that the catalysts prepared by Hansford

1 In re Pilkington, 411 F.2d 1345, 1348 (CCPA 1969).

2 In re Brown, 459 F.2d 531, 535 (CCPA 1972).
3
Appeal 2010-000041
Application 10/513,041

and Appellants do not have the same structure. In particular, EXAMPLES
1, 2 and 3 of the present Specification demonstrate that catalysts prepared
from Appellants’ organosilicon compound are structurally different than
catalysts prepared from highly dispersed SiO2 , and a Declaration by one of
the present inventors demonstrates that a catalyst prepared in accordance
with the present invention is structurally different than a catalyst prepared by
co-precipitating zirconium and silicon compounds from an acidic solution as
taught by Hansford. The Declaration establishes that a catalyst prepared by
the recited method is different than the catalyst of Hansford with respect to
BET surface area, pore volume and pore area. The Examiner’s ineffective
response to Appellants’ evidence is simply that “[s]ince the instant claims
are called for [sic] “a catalyst”, which is a product and not a process of
making, the argument is not persuasive” (Ans. 4, second para.).
Significantly, the Examiner offers no analysis of Appellant’s Specification
and Declaration evidence which undermines its probative value with respect
to the patentability of the claimed invention.
In conclusion, based on the foregoing, we are constrained to reverse
the Examiners rejection.

REVERSED
tc

NOVAK DRUCE DELUCA + QUIGG LLP
1300 EYE STREET NW
SUITE 1000 WEST TOWER
WASHINGTON, DC 20005
4