Appeal No. 95-1437
Application 07/734,998
have been obvious touse [sic, to use] the support of
claims 31-35 in the conventonal [sic, conventional]
process of Orkin and Kennedy because it would have been
expected that said process would also function to add a
hydrogenation-dehydrogenation functionality to the
claimed support. The use of a novel support in the
process does not render an otherwise conventional
process unobvious. See Ex parte Ochiai, 24 USPQ 2d
1265 (Bd.App [sic, Bd. App.] 1992) and In re Durden,
226 USPQ 359 (Fed. Cir. 1985).
For the reasons detailed by the appellants in their brief
and reply brief, the above noted rejection is improper, and the
examiner's reliance on In re Durden and Ex parte Ochiai in
support of this rejection is inappropriate. The validity of this
last mentioned point is best evinced by the fact that the
decision in Ex parte Ochiai was overturned on appeal subsequent
to the mail date of the examiner's answer; In re Ochiai, 71 F.3d
1565, 37 USPQ2d 1127 (Fed. Cir. 1995).
In short, the factual circumstances before us on this appeal
are such that we cannot sustain the examiner's rejection in light
of the governing precedence enunciated by In re Ochiai
particularly at 37 USPQ2d 1131. Also see In re Pleuddemann, 910
F.2d 823, 827-28, 15 USPQ2d 1738, 1741-42 (Fed. Cir. 1990).
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