Appeal No. 95-2227
Application No. 08/048,964
We have reviewed both the evidence and appellants' arguments. We find no error in
the examiner's determination that appellants have failed to compare the closest prior art. In a
section 103 inquiry, "the fact that a specific embodiment is taught to be preferred is not
controlling, since all disclosures of the prior art, including unpreferred embodiments, must be
considered. The reference may be relied upon for all that it would have reasonably
suggested to one having ordinary skill in the art. Merck & Co. v. Biocraft Lab., Inc., 874 F.2d
804, 808, 10 USPQ2d 1843, 1846 (Fed. Cir), cert. denied, 493 U.S. 975 (1989); In re
Lamberti, 545 F2d 747, 750, 192 USPQ 278, 280 (CCPA 1976). Rosinski discloses, albeit
not as the preferred embodiment, the use of separate catalytic particles as herein claimed.
At Column 7, lines 34-44, Rosinski states that while one embodiment of the disclosed
process would make use of the two catalysts in a matrix, the process specifically exemplified
in the examples, that the other embodiment would be a physical mixture of catalyst particles
where each particle contains only one of the two types of zeolite catalysts. The reference
fairly suggests to those skilled in this art that the two catalysts could be used in a physical
mixture of particles, where the individual catalyst components are present on separate
particles. This represents the closest prior art to appellants' claimed process as argued by
the examiner. Thus, it is our conclusion that the showing is not sufficient to overcome the
prima facie case of unpatentability established by the examiner. The rejection of claims 1-17
are affirmed.
While not necessary for our determination in this appeal and therefore not reached in
our consideration of the issue presented, we find it less than clear why the examiner deemed
the data of record commensurate in scope with the claimed subject matter. We note that the
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