Ex Parte Mohri et al

Board of Patent Appeals and Interferences

Sep 26, 2002

08922478 (B.P.A.I. Sep. 26, 2002)

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not written for publication and is not binding precedent of the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. 47
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte MASAHIDE MOHRI,YOSHIO UCHIDA,
YOSHINARI SAWABE, and
HISASHI WATANBE,
_____________
Appeal No. 2000-1869
Application 08/922,478
______________
HEARD: SEPTEMBER 17, 2002
_______________
Before WALTZ, KRATZ and TIMM, Administrative Patent Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s refusal
to allow claims 1, 4, 7 and 9 through 12 as amended subsequent to
the final rejection (see the amendment dated Jan. 27, 1999, Paper
No. 35, entered as per the Advisory Action dated Fed. 4, 1999,
Appeal No. 2000-1869
Application No. 08/922,478
1 A minor amendment to correct several typographical errors was filed
concurrently with the Brief (Aug. 27, 1999). This amendment was also entered
by the examiner (see the Brief, page 3; Answer, page 2; and the Advisory
Action dated Oct. 12, 1999, Paper No. 40).
2 We rely upon a full English translation of this document, previously
made of record.
2
Paper No. 36).1 Claims 1, 4, 7 and 9-12 are the only claims
remaining in this application. We have jurisdiction pursuant to
35 U.S.C. § 134.
According to appellants, the invention is directed to a
process for producing
-alumina by calcining a transition
alumina in an atmosphere containing at least 10% by volume of
hydrogen chloride at a temperature of from 700 to 1300°C at
atmospheric pressure for a time of 10-120 minutes, where the
transition alumina is made by calcining aluminum hydroxide which
in turn is produced by the hydrolysis of aluminum isopropoxide
(Brief, pages 3-5). A copy of illustrative independent claim 1
is attached as an Appendix to this decision.
The examiner has relied upon the following references as
evidence of obviousness:
Lindsay et al. (Lindsay) 3,262,754 Jul. 26, 1966
Harato et al. (Harato) 5,302,368 Apr. 12, 1994
Ayame et al. (Ayame), “Changes in Structure and Acidity of
Alumina with Chlorine Treatment,” pp. 416-419, 62nd CATSJ Meeting
Abstracts: No. 2D105, 1988.2
Appeal No. 2000-1869
Application No. 08/922,478
3 The final rejection under 35 U.S.C. § 112, first and second
paragraphs, was withdrawn in view of appellants’ amendment dated Jan. 27,
1999, Paper No. 35, as noted in the Advisory Action dated Feb. 4, 1999, Paper
No. 36.
4 This was a provisional rejection since S.N. 08/606,679 was not allowed
as of the date of the Answer (Answer, page 4). We note that this application
has now matured into U.S. Patent No. 5,935,550, issued on Aug. 10, 1999, with
37 claims. In view of our decision infra and our consideration of the
patented claims, no remand is necessary for the examiner to reconsider this
rejection in view of the patented claims.
5 This application is also the subject of an appeal (see Appeal No.
2000-1868 and the Brief, pages 1-2).
3
The following rejections are before us in this appeal:3
(1) claims 1, 4, 7 and 9-12 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Harato (Answer, page 3);
(2) the claims on appeal also stand rejected under 35 U.S.C.
§ 103 as unpatentable over Lindsay (id.);
(3) the claims on appeal also stand rejected under 35 U.S.C.
§ 103 as unpatentable over Ayame (Answer, page 4);
(4) claims 1, 4, 7 and 9-12 stand rejected under the
judicially created doctrine of obviousness-type double patenting
over claims 1-9, 25-27, 29-52 and 56-64 of copending application
S.N. 08/606,679 (Answer, page 4);4 and
(5) the claims on appeal also stand provisionally rejected
under the judicially created doctrine of obviousness-type double
patenting over claims 1, 4-13 and 18 of copending application
S.N. 08/730,217 (Answer, page 5).5
Appeal No. 2000-1869
Application No. 08/922,478
4
We reverse all of the rejections on appeal essentially for
the reasons stated in the Brief, Reply Brief, and as set forth
below.
OPINION
The examiner finds that Harato teaches the process of
calcining transition alumina in an atmosphere of hydrogen
chloride to form alpha alumina at about 1100°C. (Answer, page 3).
The examiner thus finds that Harato differs from the claimed
subject matter “in that the % by volume of the hydrogen chloride
is not stated.” Id.
The examiner finds that “Lindsay teaches the claimed process
of calcining transition alumina or aluminum hydrate, ie.
hydroxide, in an atmosphere of hydrogen chloride at a temperature
of about 1200°C to form alpha alumina” (Answer, page 4). The
examiner thus finds that Lindsay “differs [from the claimed
subject matter] in that the % by volume of the chloride
atmosphere is not stated.” Id.
The examiner finds that “Ayame teaches the claimed process
of making alpha alumina by calcining transition alumina at 1000°C
in an atmosphere of HCl, ie. hydrogen chloride” where the
calcining pressure is 700 torr (id.). The examiner concludes
Appeal No. 2000-1869
Application No. 08/922,478
5
that this pressure “would not be much different” than the claimed
atmospheric pressure given experimental error. Id.
The examiner finds that the claims of S.N. 08/606,679
“overlap in scope of subject matter claimed.” (Answer, page 5).
Similarly, the examiner finds that the claims of S.N. 08/730,217
“overlap in scope of subject matter claimed.” Id.
The claims on appeal require that the transition alumina is
obtained by calcination of aluminum hydroxide, which in turn is
prepared by hydrolysis of aluminum isopropoxide (e.g., see claim
1 on appeal). On this record, the examiner has not presented any
factual findings from any applied reference by citing any
disclosure or suggestion (or pointed to any claimed subject
matter of copending applications S.N. 08/606,679 or S.N.
08/730,217) regarding the first step in the claimed process,
i.e., the hydrolysis of aluminum isopropoxide to form aluminum
hydroxide (see the findings discussed above and the Answer in its
entirety). On this record, the examiner has not taken notice or
cited evidence that the hydrolysis of aluminum isopropoxide to
form aluminum hydroxide is conventional or well known in the art
(id.). As correctly argued by appellants, the teachings of the
applied references and the claims of the cited applications do
Appeal No. 2000-1869
Application No. 08/922,478
6
not disclose aluminum hydroxide prepared from the isopropoxide
(e.g., Brief, pages 8 and 13; Reply Brief, pages 2 and 7).
The examiner appears to give no weight to the process
limitation that the aluminum hydroxide is formed by hydrolysis of
aluminum isopropoxide (Answer, pages 5-6 and 9-10). The examiner
states that the aluminum hydroxide of the references “would
appear to be the same” as the aluminum hydroxide produced by any
other process, such as appellants’ claimed process of hydrolysis
of aluminum isopropoxide (id.). However, appellants are not
claiming a product (or product-by-process), but are claiming a
process and all limitations of the claims must be considered by
the examiner. See In re Wilder, 429 F.2d 447, 450, 166 USPQ 545,
548 (CCPA 1970).
For the foregoing reasons, we determine that the examiner
has not presented a sufficient factual basis to support a prima
facie case of obviousness. Accordingly, all of the rejections on
appeal are reversed.
Appeal No. 2000-1869
Application No. 08/922,478
7
The decision of the examiner is reversed.
REVERSED

THOMAS A. WALTZ )
Administrative Patent Judge)
) BOARD OF PATENT
)
PETER F. KRATZ ) APPEALS AND
Administrative Patent Judge) INTERFERENCES
)
)
CATHERINE TIMM )
Administrative Patent Judge)
TAW:dal
Appeal No. 2000-1869
Application No. 08/922,478
8
SUGHRUE, MION, ZINN, MACPEAK & SEAS
2100 PENNSYLVANIA AVE., N.W.
WASHINGTON, DC 20007-3202
Appeal No. 2000-1869
Application No. 08/922,478
APPENDIX
1. A process for producing
-alumina by calcining a
transition alumina obtained by calcination of aluminum hydroxide
prepared by hydrolysis of alumina isopropoxide in an atmosphere
containing at least 10% of volume of hydrogen chloride, at a
temperature of from 700 to 1,300oC, at atmosphere pressure and
for a calcining time of from 10-120 minutes to produce said
-
alumina.