Appeal No. 95-2742
Application 08/006,411
re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784-85 (Fed. Cir.
1995); In re Shetty, 566 F.2d 81, 86, 195 USPQ 753, 756-57 (CCPA
1977); Ex parte Levy, 17 USPQ2d 1461, 1462-64 (Bd. Pat. App. &
Int. 1990), and cases cited therein. As we noted above, the
examiner has admitted that the applied prior art does not
disclose any teaching that silicon-containing materials are
present in and/or adsorbed on activated carbon in the processes
of the applied references. We also do not find in the record
before us any reasonable scientific explanation why one of
ordinary skill in this art would have known or would have
reasonably expected that silicon-containing materials can be
adsorbed onto activated carbon per se or any evidence that
silicon-containing materials are a routine contaminant of
hydrochloric acid containing process streams. Indeed, the
examiner has further admitted that no similarity between
hydrocarbons and silicon-containing materials with respect to
adsorption on activated carbon was assumed in making the
rejection (answer, page 13, lines 11-12). Thus, by the
examiner’s own admissions, inherency has not been established in
this case and, accordingly, the examiner has not carried his
burden of making out a prima facie case of obviousness of the
claimed invention of appealed claims 1 through 8 as a whole.
Indeed, the question of why one of ordinary skill in this art
would have used activated carbon to clean up a silicon-containing
materials contaminated process stream, of hydrochloric acid or
otherwise, regardless of other contaminants present, has neither
been asked nor answered.
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