Appeal 2006-2994
Application 09/753,495
while the claimed invention requires the addition of glycol to a mixture
comprising used oil and base compound. In support of their position,
Appellants note that Norman performs the following process steps prior to
the addition of glycol:
(1) contacting used oil with an aqueous solution of a basic salt to
precipitate metal contaminants, polar compounds and/or particulates (i.e.,
"solid contaminants") and separating the solid contaminants and bulk water
to provide a solids-free oil mixture. (Br. 9 citing Norman, col. 5, l. 16
through col. 6, l. 6),
(2) centrifuging the oil with the bulk water and solid contaminants
removed to remove "fine particulates and remaining suspended water from
the oil." (Br. 9 citing Norman, col. 6, 11. 21-25), and
(3) advancing the oil to a vacuum drier 22 to "remove dissolved water,
light hydrocarbons, . . . and noncondensables, such as air, from the oil."
(Br. 9 citing Norman, col. 6, ll. 54-58).
The Examiner maintains that despite these water removal steps, some
base would still remain in the oil during Norman’s glycol addition step
(Answer 6). In support of his position, the Examiner notes that “nowhere in
Norman is it indicated that all the base is removed in the water removal
step” (Answer 5-6). In our view, the Examiner has improperly attempted to
shift the burden of production to Appellants without first establishing a
prima facie case of anticipation. See In re King, 801 F.2d 1324, 1327,
231 USPQ 136, 138 (Fed.Cir.1986) (burden shifts to appellant after the PTO
establishes a prima facie case of anticipation).
The Examiner’s position is essentially that Norman adds glycol to a
mixture containing the same components recited in claim 4, i.e., oil and base
4
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