Appeal 2007-3383
Application 10/452,939
Claus process, was used by the Examiner for the disclosure to add
condensers with the catalytic stages as required by Appellants’ claim 13. In
other words, Michel’s disclosure of multiple catalytic stages appears to be
redundant in view of Tellier’s disclosure to use a series of reactors. In any
event, we determine that the Examiner has established a prima facie case
that claims 1 and 38 are obvious over the combination of Tellier in view
Burmaster and Michel. Accordingly, Appellants bear the burden of
rebutting the Examiner’s prima facie case. In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
Appellants filed the Kasztelan Declaration on October 11, 2005 to
rebut the Examiner’s prima facie case of obviousness presumably by
attempting to establish unexpected results.1 Objective evidence of
nonobviousness must be commensurate in scope with the claims which the
evidence is offered to support. In re Clemens, 622 F.2d 1029, 1036, 206
USPQ 289, 296 (CCPA 1980).
As the Examiner correctly states, the Kasztelan Declaration is not
commensurate with the claimed invention (Answer 11). The Kasztelan
Declaration is very specific regarding the type and amount of catalyst
present in each of the catalyst beds. For example, “Case 2” indicates that the
protective catalyst is catalyst C and the second catalyst in the bed is catalyst
A, which the declarant indicates are described in Appellants’ Specification
(Kasztelan Declaration 2). Appellants’ Specification describes catalyst C
1 Appellants have never indicated that the results shown in the Kasztelan
Declaration are unexpected. Furthermore, the declarant indicates that the
evidence in the Kasztelan Declaration shows that the prior art does not
“anticipate” the claimed invention instead of addressing the relevant issue of
whether the evidence establishes nonobviousness of the claimed invention.
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