Appeal No. 95-2742
Application 08/006,411
The rejection of appealed claims 9 through 11 under 35 U.S.C.
' 103 stands on a different factual foundation. It reasonably
appears to us from consideration of the disclosures of Blyum and
Vanlautem that the aqueous hydrochloric acid recovered in the
Examples thereof is the same as or substantially the same as the
hydrochloric acid defined by appealed claims 9 through 11. Thus,
the burden falls upon appellants to establish by objective
evidence that the claimed invention patentably distinguishes over
these references, whether the rejection is considered to be based
on 35 U.S.C. ' 102 or 35 U.S.C. ' 103. In re Spada, 911 F.2d
705, 708-09, 15 USPQ2d 1655, 1657-58 (Fed. Cir. 1990); In re
Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985); In
re Best, 562 F.2d 1252, 1255-56, 195 USPQ 430, 433-34 (CCPA
1977); In re Wertheim, 541 F.2d 257, 271, 191 USPQ 90, 103-04
(CCPA 1976); In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688
(CCPA 1972). Furthermore, while the issue here has been framed by
the examiner as one of obviousness under 35 U.S.C. ' 103, it is
clear to us that if the hydrochloric acid is in fact the same as
that defined by appealed claims 9 through 11, this is indeed
evidence of a lack of novelty of the claimed invention which is,
of course, “the ultimate of obviousness.” In re Fracalossi, 681
F.2d 792, 794, 215 USPQ 569, 571 (CCPA 1982); Wertheim, 541 F.2d
at 271, 191 USPQ at 103-04. Thus, to the extent that these
references anticipate the claimed hydrochloric acid, the case of
obviousness is irrebuttable. Fracalossi, supra.
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