Ex parte Kresge et al.

Board of Patent Appeals and Interferences

Oct 20, 1997

07734998 (B.P.A.I. Oct. 20, 1997)

Application for patent filed July 24, 1991. According to1
appellants, this application is a continuation-in-part of
Application 07/625,245 filed December 10, 1990, now U.S. Patent
No. 5,098,684 issued March 24, 1992, which is a continuation-in-
part of Application 07/470,008 filed January 25, 1990, now U.S.
Patent No. 5,102,643 issued April 17, 1992.
1
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte CHARLES T. KRESGE, MICHAEL E. LEONOWICZ,
WIESLAW J. ROTH and JAMES C. VARTULI
__________
Appeal No. 95-1437
Application 07/734,9981
__________
HEARD: October 14, 1997
__________
Before JOHN D. SMITH, GARRIS and WEIFFENBACH, Administrative
Patent Judges.
GARRIS, Administrative Patent Judge.
Appeal No. 95-1437
Application 07/734,998
2
DECISION ON APPEAL
This is a decision on an appeal from the final rejection of
claims 31 through 35. The only other claims in the application,
which are claims 1 through 30, have been allowed.
The subject matter on appeal relates to a method of making a
catalytic composition which includes a particular support
material. This appealed subject matter is adequately illustrated
by independent claim 31 which reads as follows:
31. A method of making a catalytic composition comprising a
metal having hydrogenation-dehydrogenation functionality
supported on a support material, the method comprising
incorporating a metal having hydrogenation-dehydrogenation
functionality with a support material comprising a non-layered,
inorganic, porous crystalline phase material exhibiting, after
calcination, an X-ray diffraction pattern with at least one peak
having a relative intensity of 100 at a d-spacing greater than
about 18 D and having a benzene sorption capacity greater than
about 15 grams benzene per 100 grams of the material at 50 torr
and 25EC.
The following references are relied upon by the examiner as
evidence of obviousness:
Orkin 3,755,145 Aug. 28, 1973
Kennedy et al. (Kennedy) 4,983,273 Jan. 8, 1991
Claims 31 through 35 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Orkin or Kennedy. On page 3 of the
answer, the examiner expresses his basic position as follows:
The process of Orkin and Kennedy differ from the
claimed invention in that they do not teach the support
as recited in the appealed claims. However, it would
Appeal No. 95-1437
Application 07/734,998
3
have been obvious touse [sic, to use] the support of
claims 31-35 in the conventonal [sic, conventional]
process of Orkin and Kennedy because it would have been
expected that said process would also function to add a
hydrogenation-dehydrogenation functionality to the
claimed support. The use of a novel support in the
process does not render an otherwise conventional
process unobvious. See Ex parte Ochiai, 24 USPQ 2d
1265 (Bd.App [sic, Bd. App.] 1992) and In re Durden,
226 USPQ 359 (Fed. Cir. 1985).
For the reasons detailed by the appellants in their brief
and reply brief, the above noted rejection is improper, and the
examiner's reliance on In re Durden and Ex parte Ochiai in
support of this rejection is inappropriate. The validity of this
last mentioned point is best evinced by the fact that the
decision in Ex parte Ochiai was overturned on appeal subsequent
to the mail date of the examiner's answer; In re Ochiai, 71 F.3d
1565, 37 USPQ2d 1127 (Fed. Cir. 1995).
In short, the factual circumstances before us on this appeal
are such that we cannot sustain the examiner's rejection in light
of the governing precedence enunciated by In re Ochiai
particularly at 37 USPQ2d 1131. Also see In re Pleuddemann, 910
F.2d 823, 827-28, 15 USPQ2d 1738, 1741-42 (Fed. Cir. 1990).
Appeal No. 95-1437
Application 07/734,998
4
The decision of the examiner is reversed.
REVERSED
JOHN D. SMITH )
Administrative Patent Judge)
)
)
)
BRADLEY R. GARRIS ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
CAMERON WEIFFENBACH )
Administrative Patent Judge)
Appeal No. 95-1437
Application 07/734,998
5
Charles J. Speciale
Office of Patent Counsel
Mobile Oil Corporation
3225 Gallows Road
Fairfax, VA 22037