Ex parte Chun et al.

Board of Patent Appeals and Interferences

Jan 30, 2002

08711631 (B.P.A.I. Jan. 30, 2002)

- 1 -
The opinion in support of the decision being entered today
was not written for publication and is not binding precedent of
the Board.
Paper No. 11

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte WOSSANG CHUN,
GEORGE W. GRAHAM and ROBERT W. McCABE
______________

Appeal No. 1998-1584
Application 08/711,631
_______________

ON BRIEF
_______________

Before GARRIS, WARREN and PAWLIKOWSKI, Administrative Patent Judges.

WARREN, Administrative Patent Judge.
Decision on Appeal and Opinion
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

1 See specification, pages 10-11. Claims 13 through 15 are also of record and have been withdrawn
by the examiner under 37 CFR § 1.142(b).
Appeal No. 1998-1584
Application 08/711,631
- 2 -
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 USPQ2d 1453, 1458 (Fed. Cir.
1998); Pro-Mold and Tool Co. v. Great Lakes Plastics Inc., 75 F.3d 1568, 1573, 37 USPQ2d
1626, 1629-30 (Fed. Cir. 1996); In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed.
Cir. 1991); In re Fine, 837 F.2d 1071, 1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988); In
re Dow Chem. Co., 837 F.2d 469, 473, 5 USPQ2d 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 USPQ2d 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 USPQ 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 USPQ2d at 1029;
see also PPG Industries Inc. v. Guardian Indus. Corp., 156 F.3d 1351, 1354-57, 48 USPQ2d

2 Answer, pages 4-7.
Appeal No. 1998-1584
Application 08/711,631
- 3 -
1351, 1353-56 (Fed. Cir. 1998) (Patentees “could have defined the scope of the phrase ‘consisting
essentially of’ for purposes of its patent by making clear in its specification what it regarded as
constituting a material change in the basic and novel characteristics of the invention. The question for our
decision is whether PPG did so.”); In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA
1976); cf. Ex parte Boukidis, 154 USPQ 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 USPQ2d 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

3 A discussion of Mullhaupt is not necessary to our decision. See In re Kronig, 539 F.2d 1300,
1302-04, 190 USPQ 425, 426-28 (CCPA 1976).
Appeal No. 1998-1584
Application 08/711,631
- 4 -
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 extent that the examiner is relying on such structural similarity in
contending that “a composition formed as a mixture of the support materials and metal oxides is
considered to comprise similar properties to the composition wherein a support is ‘loaded’ with metal
oxides” (answer, page 11), we cannot find the requisite evidence necessary to establish this position in
any reference of record and our search for the same has not been aided by the examiner. See In re
Jones, 958 F.2d 347, 349-51, 21 USPQ2d 1941, 1943-44 (Fed. Cir. 1992) (“Conspicuously missing
from this record is any evidence, other than the PTO’s speculation (if it be called evidence) that one of
ordinary skill in the herbicidal art would have been motivated to make the modifications of the prior art
salts necessary to arrive at the claimed . . . salt.”); In re Dillon, 919 F.2d 688, 692-93, 16 USPQ2d
1897, 1901 (Fed. Cir. 1990)(in banc) (“This court . . . reaffirms that structural similarity between
claimed and prior art subject matter, proved by combining references or otherwise, where the prior art
gives reason or motivation to make the claimed compositions, creates a prima facie case of
obviousness, and that the burden (and opportunity) then falls on an applicant to rebut that prima facie
case.”); In re Grabiak, 769 F.2d 729, 731-32, 226 USPQ 870, 872 (Fed. Cir. 1985) (“[W]e have
concluded that generalizations should be avoided insofar as specific chemical structures are alleged to
be prima facie obvious one from the other. . . . [I]n the case before us there must be adequate support
in the prior art for the ester/thioester change in structure, in order to complete the PTO’s prima facie
case and shift the burden of going forward to the applicant.”); In re Payne, 606 F.2d 303, 315, 203
USPQ 245, 254-55 (CCPA 1979) (“An obviousness rejection based on similarity in chemical structure
and function entails the motivation of one skilled in the art to make a claimed compound, in the
expectation that compounds similar in structure will have similar properties.”).
Similarly, with respect to the method of appealed claim 7, while Horiuchi does indeed disclose
processes in which praseodymium oxide is “loaded onto” zirconium oxide as the refractory inorganic
oxide support (e.g., cols. 3-4), we must agree with appellants that Horiuchi would not have suggested
to one of ordinary skill in this art to use a cerium oxide or a cerium-zirconium oxide as a refractory
Appeal No. 1998-1584
Application 08/711,631
- 5 -
inorganic oxide support (e.g., col. 3, lines 7-13). Indeed, the examiner has not established with
evidence or scientific explanation why one of ordinary skill in the art would have modified the processes
of Horiuchi by using the composite oxide of Yao, which also contains hafnium oxide in addition to
cerium oxide and zirconium oxide, as such a support (answer, page 10). Cf. In re Brouwer, 77 F.3d
422, 425, 37 USPQ2d 1663, 1666 (Fed. Cir. 1996).
Accordingly, in the absence of evidence necessary to support the examiner’s position as we
have discussed above, we reverse the rejection of appealed claims 1 through 6 over Yao in view of
Mullhaupt and the rejection of appealed claims 7 through 12 over Horiuchi in view of Yao. We find it
clear from this record that the examiner has resorted to hindsight gained from appellants’ specification
and claims in order to reach the conclusion that the claimed mixed oxide and the method for making the
same were prima facie obviousness over the applied references, which is an inappropriate standard of
obviousness under § 103(a). See generally, W.L. Gore & Associates v. Garlock, Inc., 721 F.2d
1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983) (“To imbue one of ordinary skill in the art with
knowledge of the invention . . . when no prior art reference or references of record convey or suggest
that knowledge, is to fall victim to . . . hindsight . . . wherein that which only the inventor taught is used
against its teacher.”).
The examiner’s decision is reversed.
Reversed

BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Appeal No. 1998-1584
Application 08/711,631
- 6 -
BEVERLY A. PAWLIKOWSKI )
Administrative Patent Judge )
Lorraine S. Melotik
Ford Motor Company
911 East Parklane Towers
One Parklane Boulevard
Dearborn, MI 48126