Appeal 2006-2994
Application 09/753,495
compound. However, the Examiner has not demonstrated that Norman’s
mixture “necessarily or inherently” includes the base compound. See In re
Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)(“Where . .
. the claimed and prior art products are identical or substantially identical, or
are produced by identical or substantially identical processes, the PTO can
require an applicant to prove that the prior art products do not necessarily or
inherently possess the characteristics of his claimed product.”). To the
contrary, Appellants have noted several distinctions between their process
and that of Norman which suggest that Norman’s mixture is indeed devoid
of base compound at the time of glycol addition. The Examiner fails to fully
address these distinctions.
Accordingly, we find that the Examiner has failed to establish a prima
facie case of anticipation. The rejection of claims 4, 6, 11, and 12 as
anticipated by Norman is reversed.
Claims 7-9, 13, 16-22, 25-28, 31, 32, 34-36, and 39-42 are rejected
under 35 U.S.C § 103(a) as unpatentable over Norman in view of WO ‘928
(“Chavet”).
The Examiner relies on Norman for a disclosure of the process as
claimed with the exception of the distillation step, the specifically claimed
used oils containing light hydrocarbons, and the amounts of base or glycol
(Answer 3). The Examiner relies on Chavet for a disclosure of a process for
refining used oil comprising contacting the oil with an alkaline reactant in
the presence of a solvent such as ethylene glycol and then removing
contaminants by distillation (Answer 4). The Examiner maintains that it
would have been obvious to one having ordinary skill in the art at the time of
the invention to have modified the process of Norman by distilling to
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