Appeal No. 96-0394
Application 07/989,729
It appears that the examiner's position is that the catalysts
described by either Jones or Tauster inherently have the claimed
superacidic property because they are made by the "same process
of impregnation and calcination".
To establish inherency under § 102 or § 103, the examiner
has the initial burden of supplying evidence and/or scientific
reasoning to support a conclusion that the prior art catalysts
necessarily possess an acidity factor H < -18. Cf. In re King,
o
801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986); In re
Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981);
In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 432-33 (CCPA
1977); Ex parte Skinner, 2 USPQ2d 1788, 1788-89 (Bd. Pat. App. &
Int. 1986). No convincing evidence or scientific reasoning,
however, is offered by the examiner. The examiner's argument
that Jones or Tauster discloses the same process of impregnation
and calcination is erroneous. Neither Jones nor Tauster
discloses soaking a calcined catalyst with 1.0 normal sulfuric
acid for a prolonged period. Compare the disclosures of Jones
and Tauster with example 1 at page 18 of the specification.
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