Ex parte Hartmann et al.

Board of Patent Appeals and Interferences

Sep 7, 2000

08528044 (B.P.A.I. Sep. 7, 2000)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 28
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte WERNER HARTMANN and DIETER KERNER
____________
Appeal No. 1997-1793
Application No. 08/528,044
____________
ON BRIEF
____________
Before GARRIS, WALTZ, and DELMENDO, Administrative Patent
Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134
from the examiner’s final rejection of claims 2 through 5, 9,
and 10, which are the only claims pending in the subject
application.
The subject matter on appeal generally relates to an iron
oxide/titanium dioxide mixed oxide composition having the
recited characteristics, wherein the mixed oxide is prepared
Appeal No. 1997-1793
Application No. 08/528,044
2
using the so-called “flame hydrolytic method,” and to a
process for making such a mixed oxide (specification, page 1,
lines 22-30). According to the appellants, the claimed mixed
oxide compositions exhibit improved UV light absorption as
compared with products of the prior art (specification, page
2, lines 17-21; appeal brief, page 4).
The appealed claims are reproduced below:
2. Titanium dioxide powder composition consisting
of a flame hydrolytically prepared iron oxide/titanium
dioxide mixed oxide with a BET surface area of 10 to 150
m /g, which contains 0.5 to 50 wt. % of iron oxide, with2
reference to the total amount, as a component of the
mixed oxide.
3. A process for preparing the titanium dioxide
powder which contains iron oxide according to claim 2
which comprises volatilizing anhydrous iron(III) chloride
together with an inert gas, transferring the volatilized
anhydrous iron(III) chloride to the mixing chamber of a
burner, mixing the volatilized iron(III) chloride in the
burner with hydrogen, air and gaseous titanium
tetrachloride in a ratio which corresponds to the
composition of the iron oxide/titanium dioxide mixed
oxide, burning the 4-component mixture in a reaction
chamber of said burner and separating the solid iron
oxide/titanium dioxide mixed oxide from the gaseous
reaction product.
4. A process as set forth in claim 3 including the
step of removing adhering hydrogen chloride in moist air.
5. A titanium dioxide/iron(III) oxide mixed oxide
powder prepared by the method of claim 3 or claim 4.
Appeal No. 1997-1793
Application No. 08/528,044
The examiner has indicated in the answer at page 2 that1
Ishihara has a publication date of December, 1993. We note,
however, that the actual publication date of the Derwent
abstract, which is the document upon which the examiner
relies, is uncertain on this record. Although it appears that
the underlying Japanese patent document (JP 5-330825)
identified in the abstract was published in December, 1993,
this Japanese patent document has not been made of record in
the present application and has not been relied upon in the
examiner’s rejection.
3
9. Cosmetic articles, lacquers, catalysts and
photocatalysts containing the titanium dioxide powder set
forth in claim 2 as a UV absorber.
10. A skin cosmetic containing a flame-
hydrolytically prepared titanium dioxide component which
contains iron oxide in an amount of about 0.05 to about
10 wt.% of the titanium dioxide component.
The prior art references relied upon by the examiner as
evidence of obviousness are:
Kleinschmit et al. 4,297,143 Oct. 27,
1981
(Kleinschmit)
Tuo Jin, Hideshi Hattori, and Kozo Tanabe (Hattori),
“Decomposition of 2-Butanol Catalyzed by Iron Oxide and Mixed
Oxides Containing Iron,” 56 Bull. Chem. Soc. Jpn., no. 11,
3208-15 (November 1983).
Derwent Abstract AN 94-022607 (Ishihara)(publication date
unknown).1
The ground of rejection presented for our review in this
appeal is as follows:
Appeal No. 1997-1793
Application No. 08/528,044
4
Claims 2 through 5, 9, and 10 stand rejected under 35
U.S.C. § 103 as unpatentable over Kleinschmit in view of
Hattori and Ishihara.
We refer to the appeal brief and to the examiner’s answer
for a complete exposition of the opposing viewpoints expressed
by the appellants and by the examiner concerning the above
noted
rejection.
OPINION
For the reasons stated below, we cannot sustain the
aforementioned rejection of claims 2 through 5, 9, and 10
under 35 U.S.C. § 103. Accordingly, we reverse. Further, we
remand this application to the examiner for appropriate action
as noted below.
We consider first the examiner’s §103 rejection. The
examiner’s stated position is as follows:
. . . Kleinschmit et al. shows that it was known
to make powders containing silica and either one of
titania or iron oxide, made by the instant flame
hydrolytic processes, but fails to explicitly teach
that a combination of titania and iron oxide should
be used in the absence of silica (col. 1, l. 30-65).
Hattori shows that it was known to make Ti/Fe
mixed oxides by coprecipitating and hydrolyzing Ti
and Fe, but fails to suggest flame hydrolysis (first
page, Table 1, Table 4). In the absence of any
showing of criticality or of unexpected results, it
would have been a matter of obvious design choice to
Appeal No. 1997-1793
Application No. 08/528,044
5
have used the methods of Kleinschmit et al. to make
Ti/Fe mixed oxides of Hattori, for instance because
the flame hydrolysis apparatus may be more readily
available or produce the mixed oxide more
economically.
In the absence of any showing of unexpected
results, it would have been obvious to have combined
varying proportions of iron oxide and titania in
order to vary the color or the catalytic activity of
the powders of Hattori mad[e] by the process
suggested by Kleinschmit et al. Still further, it
would have been obvious to one of ordinary skill in
the art to have used the thus obtained particles in
cosmetics as is suggested by Ishihara in the absence
of any showing of unexpected results. [Answer, pp.
3-4; italics original, bolded italics added.]
Thus, a principal question raised in this appeal is
whether the collective teachings of the applied prior art
references would have led one of ordinary skill in the art to
use
Kleinschmit’s pyrogenic method in the production of Hattori’s
binary oxides. We answer this question in the negative.
To properly reject claims under 35 U.S.C. § 103 as prima
facie obvious in view of a combination of prior art
references, the examiner must consider, inter alia, two
factors: (1) whether the prior art would have suggested to one
of ordinary skill in the art to make the claimed composition
or carry out the claimed process; and (2) whether the prior
art would also have revealed that, in so making or carrying
out, the person of ordinary skill would have had a reasonable
Appeal No. 1997-1793
Application No. 08/528,044
6
expectation of success. In re Vaeck, 947 F.2d 488, 493, 20
USPQ2d 1438, 1442 (Fed. Cir. 1991)(citing In re Dow Chemical
Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988).
Both the suggestion and reasonable expectation of success must
be founded in the prior art, not in applicants’ disclosure.
Id. Neither requirement has been satisfied here.
We find that Kleinschmit discloses a process for the
production of pyrogenically produced silicon dioxide-mixed
oxides having a BET surface area of 50 to 400 m /g and2
containing 0.01 to 10 weight % zirconium dioxide, 0.1 to 10
weight % iron oxide, or 0.1 to 9.9 weight % titanium dioxide
(column 1, lines 43-49). According to Kleinschmit, the
process involves:
. . . vaporizing silicon tetrachloride, diluting it
with preheated air, supplying the mixture to a known
type of burner, mixing it there with hydrogen and
with the vaporous chloride of iron, titanium or
zirconium in
such a ratio that the correspondingly composed silicon
dioxide-mixed oxide results, burning the 4-component
mixture in a reaction chamber, separating the solid
silicon dioxide-mixed oxide obtained thereby from the
gaseous reaction products by means of a known apparatus
and freeing from adhering hydrogen chloride by heating in
moist air. [Column 1, lines 50-60.]
Kleinschmit further teaches that the silicon dioxide-mixed
oxide thus produced can be used as thermal insulating
materials (column 2, lines 3-5). However, Kleinschmit does
not teach or suggest that the disclosed silicon dioxide-mixed
Appeal No. 1997-1793
Application No. 08/528,044
7
oxide can be used as a cosmetic article, lacquer, catalyst or
photocatalyst (appealed claim 9) or as a skin cosmetic
(appealed claim 10). Nor does Kleinschmit suggest, much less
teach, the production of an iron oxide/titanium dioxide mixed
oxide which is free from silicon dioxide (appealed claims 2-
5).
In stark contrast to Kleinschmit, Hattori discloses
various binary oxides of Fe O -TiO containing 10-90% Fe O and2 3 2 2 3
having surface areas of 21-62 m /g (experimental section,2
Table 1, page 3208). According to Hattori, the binary oxides
are useful as catalysts for the decomposition of 2-butanol
(page 3208; Table 4, page 3212). Hattori further teaches that
the disclosed binary oxides are produced by a coprecipitation
method involving the steps of subjecting a mixed solution of
ferric nitrate and titanium tetrachloride to hydrolysis with
aqueous ammonia at a pH of 8-9 to form a precipitate, washing
the precipitate with
deionized water, drying the precipitate at 100EC for 20-30
hours, and then calcining the dried precipitate in air at
500EC for 2-3 hours (experimental section, page 3208).
Contrary to the examiner’s stated position, we do not
find any teaching or suggestion in the applied prior art
references to use Kleinschmit’s method of making silicon
Appeal No. 1997-1793
Application No. 08/528,044
8
dioxide-mixed oxides, which are described as being suitable in
the production of thermal insulation materials, to make the
Fe O -TiO binary oxide 2-butanol decomposition catalysts of2 3 2
Hattori so as to arrive at the appellants’ claimed subject
matter. Additionally, we disagree with the examiner’s
conclusion (answer, page 8) that the teachings of the applied
prior art references provide the requisite reasonable
expectation of success in modifying Hattori as proposed by the
examiner. In this regard, we note that the chemical and
physical properties of Kleinschmit’s product, which is
suitable for making thermal insulation materials, are
completely different from those of Hattori’s 2-butanol
decomposition catalyst. Unlike Hattori’s catalyst,
Kleinschmit’s materials must necessarily contain a major
amount of silicon dioxide in combination with minor amounts of
zirconium dioxide, iron oxide, or titanium dioxide. Under
these circumstances, it cannot be said that one of ordinary
skill in the art would have had a reasonable expectation of
success in using Kleinschmit’s
pyrogenic process, which is specifically limited to particular
silicon dioxide mixed oxides useful for preparing thermal
insulation materials, in the production of the specific 2-
butanol decomposition catalysts (e.g., Fe O -TiO ) described in2 3 2
Appeal No. 1997-1793
Application No. 08/528,044
9
Hattori. Also, while the examiner surmises that “flame
hydrolysis apparatus may be more readily available or produce
the mixed oxide more economically” (answer, page 3), the
examiner has not pointed to, and we do not find, any factual
basis in the record to support such an allegation.
As to Ishihara, the examiner has taken the position that
Ishihara suggests using the mixed oxides of Hattori, as
modified by Kleinschmit, for cosmetics (answer, pages 3-4).
Further, the examiner has alleged that one of ordinary skill
in the art would have been motivated to use Kleinschmit’s
flame hydrolytic method to make Ishihara’s mixed oxides and
would have had a reasonable expectation of success in doing so
as an obvious design choice (answer, pages 7-8). However, the
examiner has not properly established whether the Ishihara
abstract is in fact prior art against the subject matter of
the appealed claims, especially in view of the uncertainty of
the publication date of this reference. In any event, we find
that the examiner’s position is not well founded because: (1)
there is no teaching or suggestion in the prior art to use
Kleinschmit’s method to make Ishihara’s
product; and (2) there is no reasonable expectation of success
from the prior art for doing so. Vaeck, 947 F.2d at 493, 20
USPQ2d at 1442.
Appeal No. 1997-1793
Application No. 08/528,044
10
We therefore determine that the examiner has not carried
the initial burden of establishing a prima facie case of
obviousness within the meaning of 35 U.S.C. § 103 against the
subject matter of the appealed claims. In re Rijckaert, 9
F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993); In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). Since the examiner’s initial burden of proof has not
been met, we need not address the sufficiency of the
appellants’ declaration evidence (Paper No. 9 and Paper No.
18) relative to the examiner’s stated rejection. In re Fine,
837 F.2d 1071, 1076, 5 USPQ2d 1596, 1600 (Fed. Cir. 1988).
The examiner’s stated rejection under 35 U.S.C. § 103 of
claims 2 through 5, 9, and 10 as unpatentable over Kleinschmit
in view of Hattori and Ishihara is reversed.
REMAND TO THE EXAMINER
Upon the return of this application to the jurisdiction
of the examiner, the following issues should be fully
considered by the examiner.
1. Whether claims 2, 5, and 9 should be rejected under
35 U.S.C. § 102(b) as anticipated by or, in the alternative,
under 35 U.S.C. § 103(a) as unpatentable over Hattori.
Appeal No. 1997-1793
Application No. 08/528,044
11
2. Whether JP 5-330,825 (JP ‘825), which is the
underlying patent identified in the Ishihara abstract,
qualifies as prior art under 35 U.S.C. § 102(a), taking into
account the appellants’ earliest U.S. filing date and claim
for priority under 35 U.S.C. § 119, and if so, whether claim
10 should be rejected under 35 U.S.C. § 102(a) as anticipated
by or, in the alternative, under 35 U.S.C. § 103(a) as
unpatentable over JP ‘825.
1. The Hattori Reference:
“To anticipate a claim, a prior art reference must
disclose every limitation of the claimed invention, either
explicitly or inherently.” In re Schreiber, 128 F.3d 1473,
1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997)); accord Glaxo
Inc. v. Novopharm Ltd., 52 F.3d 1043, 1047, 34 USPQ2d 1565,
1567 (Fed. Cir. 1995). For a product claim, however, the mere
fact that a prior art product is made by a process different
from that recited in the claim does not, in and of itself,
defeat an anticipation rejection over the prior art product.
In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir.
1985)(“If the product in a product-by-process claim is the
same as or obvious from a product of the prior art, the claim
Appeal No. 1997-1793
Application No. 08/528,044
12
is unpatentable even though the prior product was made by a
different process.”).
In In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34
(CCPA 1977), the predecessor of our reviewing court explained
as follows:
Where, as here, the claimed and prior art products
are identical or substantially identical, or are
produced by identical or substantially identical
processes, the PTO can require an applicant to prove
that the prior art products do not necessarily or
inherently possess the characteristics of his
claimed product. . . Whether the rejection is based
on inherency under 35 U.S.C. 102, on prima facie
obviousness under 35 U.S.C. 103, jointly or
alternatively, the burden of proof is the same, and
its fairness is evidenced by the PTO’s inability to
manufacture products or to obtain and compare prior
art products. [Citations and footnotes omitted.]
The examiner should consider the teachings of Hattori
with these legal principles in mind. As we discussed above,
Hattori discloses various precipitated binary oxides of Fe O -2 3
TiO containing 10-90% Fe O and having surface areas of 21-622 2 3
m /g (experimental section, Table 1, page 3208). Although it2
is not entirely clear whether Hattori is referring to mole
percents or weight percents in Table 1, it would appear that
the product identified as “Fe O -TiO (1/9)” meets the iron2 3 2
oxide content as
Appeal No. 1997-1793
Application No. 08/528,044
If the percentages described for the compositions in2
Hattori’s Table 1 are on total molar basis, the product
identified as “Fe O -TiO (1/9)” would contain about 18.2 wt.%2 3 2
of iron oxide. (We arrive at this calculation based on our
observation that the molecular weights for Fe O and TiO are2 3 2
159.7 g/mol and 79.9 g/mol, respectively.) On the other hand,
if the percentages are on total weight basis, the product
would obviously contain 10 wt.% of iron oxide. Either way,
Hattori’s disclosed product appears to meet the claim element
with respect to the iron oxide content.
13
recited in appealed claim 2. In addition, we note that2
Hattori teaches a surface area of 62 m /g for “Fe O -TiO (1/9),”2 2 3 2
which satisfies the claim element with respect to surface
area. As we have discussed above, Hattori teaches that the
precipitated binary oxides, which have the same surface areas
as the appellants’ claimed catalyst powders (appealed claims
2, 5, and 9), are useful as catalysts for the decomposition of
2-butanol (page 3208; Table 4, page 3212).
In contrast to the subject matter of appealed claim 2 or
5, which recites a product prepared by flame hydrolysis,
Hattori teaches that the disclosed binary oxides are produced
by a coprecipitation method involving the steps of subjecting
a mixed solution of ferric nitrate and titanium tetrachloride
to hydrolysis with aqueous ammonia at a pH of 8-9 to form a
precipitate, washing the precipitate with deionized water,
drying the precipitate at 100EC for 20-30 hours, and then
Appeal No. 1997-1793
Application No. 08/528,044
14
calcining the dried precipitate in air at 500EC for 2-3 hours
(experimental
section, page 3208). However, as in the appellants’ flame
hydrolysis preparation process (specification, page 1, line 31
to page 2, line 7; appealed claim 3), Hattori describes the
coprecipitation method as reacting an iron salt with titanium
tetrachloride and then treating the resulting product at
elevated temperatures to yield an iron oxide-titanium oxide
binary oxides having the same composition and the same surface
area as recited in appealed claim 2. In this regard, we note
that the appellants have contested the examiner’s rejection as
follows:
One of the critical features of the present
invention is that the iron oxide/titanium dioxide
mixed oxide is flame hydrolytically prepared. This
feature is believed to be critical to the invention
because flame hydrolysis enables production of
titanium dioxide having very small particle size,
i.e., a BET surface area of 10-150 m /g, as2
positively recited in claim 2. Such particles are
advantageous because they have no pores, or very few
pores which can be clogged with so-called secondary
particles. [Underscoring original, italics added;
brief, page 4.]
Although Hattori uses a different preparation method, the
final catalyst product identified as “Fe O -TiO (1/9)”2 3 2
possesses the same composition and the same surface area as
the “flame hydrolytically prepared” product recited in
appealed claim 2. Under these circumstances, we think it is
Appeal No. 1997-1793
Application No. 08/528,044
15
reasonable to conclude that the prior art product is
indistinguishable from the appellants’ claimed product and
that it is appropriate to shift the burden of proof to the
appellants to show a patentable
difference. Best, 562 F.2d at 1255, 195 USPQ at 433-34; In re
Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed. Cir.
1990)(reaffirming the principle that similarities in terms of
reactants, reaction conditions, and properties amount to a
prima facie case of unpatentability). The fairness in the
shifting of the burden of proof here would be evidenced by the
PTO’s inability to conduct laboratory experiments. Best, 562
F.2d at 1255, 195 USPQ at 433-34.
As to claim 9, which further recites the UV absorption
property of the claimed product, it is reasonable to believe
that such a property would be inherent in the products
described in Hattori, because the claimed product and the
prior art product are indistinguishable. Spada, 911 F.2d at
709, 15 USPQ2d at 1658 (“When the claimed compositions are not
novel they are not rendered patentable by recitation of
properties, whether or not these properties are shown or
suggested in the prior art.”).
We note that two declarations (Paper No. 9 and Paper No.
18) have been filed during the prosecution in an attempt to
Appeal No. 1997-1793
Application No. 08/528,044
The first declaration filed on July 13, 1995 (Paper No.3
9) was unexecuted and should therefore be given no weight. We
note, however, that the second declaration filed October 18,
1995 (Paper No. 18), which is virtually identical to the first
declaration, was executed.
16
show that the appellants’ claimed product has novel and
nonobvious
properties. However, the examiner should reevaluate this3
evidence to determine whether the evidence is sufficient to
show that Hattori’s products fail to necessarily or inherently
possess the characteristics of their claimed product.
Furthermore, the examiner should analyze whether the showing
is commensurate in scope with the claims. In passing, we note
that the descriptions of the comparative (prior art) mixed
oxide as well as the inventive mixed oxide are vague (October
18, 1995 declaration, page 2). Thus, it is not possible to
ascertain whether the runs are truly comparative (i.e.,
whether the experiments constitute back-to-back runs holding
all variables constant except for the novel features of the
claimed invention) and whether the showing is in fact
commensurate in scope with the claims. For example, it is
unclear whether the comparative product contains the same
amount of iron oxide and possesses the same specific surface
area as the inventive product identified as “pyrogenically
Appeal No. 1997-1793
Application No. 08/528,044
17
produced mixed oxide TiO PF .” Also, it is not clear whether2 2
the phrase “pyrogenically produced” is indicative of the
production process as broadly recited in appealed claim 2 or
claim 3. Similarly, it is not certain whether the comparative
mixed oxide is in fact made by a process which corresponds to
the process as described in Hattori. The examiner and the
appellants should fully explore these issues.
2. JP ‘825:
With respect to JP ‘825, which was published on December
14, 1993, the examiner should first determine whether the
document qualifies as prior art against the claimed subject
matter. In this regard, we initially note that the present
application is a continuation of Application No. 08/181,426
filed on January 14, 1994. However, we also observe that the
appellants have claimed priority under 35 U.S.C. § 119 to
German Patent Application No. P 43 02 896.9 filed February 2,
1993. Although the examiner has indicated on the face of the
file wrapper that the appellants have met the conditions of 35
U.S.C. § 119, we do not find an accurate English language
translation of the priority document pursuant to 37 CFR § 1.55
(1997) in the record. Nor do we find any entry in the
Appeal No. 1997-1793
Application No. 08/528,044
We note that the “Contents” of the file wrapper of the4
parent application is missing, even though the present
application is a file wrapper continuation application.
18
“Contents” of the file wrapper of the present application to4
clearly indicate that the appellants have submitted such an
accurate English language translation. Thus, in the absence
of an accurate English language translation of the priority
document, it appears that JP ‘825 would qualify as prior art
under 35 U.S.C. § 102(a).
If the examiner determines that JP ‘825 qualifies as
prior art, the examiner should obtain a complete English
language translation to fully evaluate the teachings of the
reference as a whole. In reviewing the Derwent abstract of JP
‘825 (i.e., Ishihara), we find that the reference teaches a
sunscreen composition containing a mixed oxide in which 1-15
wt.% of iron oxide is precipitated onto hydrated titanium
oxide and then heat treated at 600EC. The examiner should
consider the complete translation of JP ‘825 to determine
whether the product of JP ‘825 is indistinguishable from the
product as recited in appealed claim 10 and whether it would
be appropriate to shift the burden of proof to the appellants
to show that the prior art product would not necessarily or
inherently possess the characteristics as recited in the
claim. If claim 10 is to be rejected over JP ‘825 on this
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Application No. 08/528,044
19
basis, the examiner should reevaluate the declaration evidence
and again notify the appellants why the declaration evidence
is insufficient.
For the reasons stated above, we remand this application
to the examiner for appropriate action. This application, by
virtue of its “special” status, requires an immediate action,
MPEP § 708.01, (D).
The decision of the examiner is reversed.
REVERSED AND REMANDED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ROMULO H. DELMENDO )
Administrative Patent Judge )
Appeal No. 1997-1793
Application No. 08/528,044
20
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