Appeal No. 95-2742
Application 08/006,411
in the present case the purpose of the claimed processes is the
removal of silicon-containing materials which contaminate aqueous
hydrochloric acid as recited in the preamble of appealed claim 1,
which purpose when considered with process step “(I)” of that
claim limits the claimed processes to the treatment of
hydrochloric acid contaminated with silicon-containing material.
See, e.g., In re Stencel, 828 F.3d 751, 754, 4 USPQ2d 1071, 1073
(Fed. Cir. 1987). Thus, it is clear that the claimed processes
as a whole differ from the references and admitted prior art as
applied by the examiner in that this prior art, as admitted by
the examiner (answer, pages 6 and 12), fails to disclose any
teaching that silicon-containing materials are present in and/or
adsorbed on activated carbon in the processes of the applied
references. Even so, the examiner alleges that since activated
carbon is used to decontaminate aqueous hydrochloric acid
containing organic materials (see, e.g., Vanlautem, col. 3), it
would have been obvious to use activated carbon to decontaminate
“[hydrochloric acid] by-products of the hydrolysis of basic
chlorosilanes” which is contaminated by organic materials in
addition to silicon-containing materials, since such a process
“would inherently remove the silicon-containing materials in the
[hydrochloric acid] by-products” (answer, page 6).
The examiner must establish that one of ordinary skill in the
art would have recognized that silicon-containing materials would
inherently be removed by adsorption on activated carbon by a
showing of fact or scientific reasoning in order to make out a
prima facie case of obviousness on this basis. See generally In
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