Appeal No. 2004-0599
Application No. 09/843,554
Terhune differs from the claimed amount (Answer, page 3) but the
examiner has failed to state why it would have been obvious to
one of ordinary skill in this art to modify this amount (0.1%) to
include the claimed range (about 0.5% to 3%)(see the Answer in
its entirety). In the “Response to Argument” (Answer, page 5),
the examiner finds that the reference suggests that the final
product may contain 5-10% of the di- or tri-isopropyl species,
citing Terhune, col. 3, ll. 11-17. However, the examiner has not
explained how this reference disclosure to all di-alkyl species
is relevant to the claimed amount of 2,6-dialkyl phenol. We note
that Example 1 of Terhune discloses three (3) other dialkyl
phenols in addition to the 2,6-dialkyl phenol isomer.
Additionally, we do not agree with the examiner that the
claimed amount of trialkyl phenol would have been obvious in view
of Terhune (Answer, page 3). Even assuming arguendo that the
examiner’s claim construction of the term “about 4%” is correct
(Answer, pages 4-5),3 the examiner has not shown why one of
ordinary skill in this art would have modified the amount of
trialkyl phenol disclosed and exemplified by Terhune (0.1%) to
render obvious the lowest amount of trialkyl phenol (0.8%) of
3See In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934,
1936 (Fed. Cir. 1990).
4
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