Appeal No. 94-2999
Application 07/672,286
The contrary opinion expressed by the examiner in his answers is
simply unpersuasive. As a consequence, we cannot sustain the
examiner’s § 112, first paragraph, rejection of claims 8 through
28.
We also cannot sustain the § 103 rejection advanced by the
examiner on this appeal. From our perspective, the examiner has
committed both factual as well as legal errors in his aforequoted
conclusion that “[i]t would have been obvious to a routineer in
the art that the alcohol produced in the fermentation process
could have been used as the source of alcohol for the
sterilization”. By long established legal principle, it was
improper for the examiner to have reached an obviousness
conclusion on the grounds that “the alcohol produced in the
fermentation process could have been used as the source of
alcohol for the sterilization”. See In re Gordon, 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984) (mere fact that prior
art could be modified does not make modification obvious unless
prior art suggested desirability of modification). Moreover, the
examiner’s obviousness conclusion is predicated on factual error
in the sense that none of the applied references teaches that
“the alcohol produced in the fermentation process [is an
acceptable] ... source of alcohol for the sterilization.”
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