Appeal No. 95-2227
Application No. 08/048,964
appellants acknowledge at paragraphs 10-18 of the Adewuyi declaration of June 4, 1993, the
specific parameters relating to temperature, pressure, residence time, and feed stock used
in comparing the process of Rosinski and the claimed process. All would appear to be
process parameters, which would affect the final product, and yet are not reflected in the
limitations in claim 1, 10 and 16. Should further prosecution occur, the examiner should
carefully review the evidence of record or subsequently submitted evidence to determine if
the evidence is in fact commensurate with the claimed subject matter.
Claims 18-20:
Appellants have separately argued the patentability of claims 18, 19, and 20. The
examiner has not separately addressed these claims in the statement of rejection. However,
in rebuttal to appellants' arguments in the Brief, he states (Answer, page 6):
Therefore, it is the examiner's position that one of ordinary skill in the art
would monitor the product composition including the amounts of methane,
butadiene, normal olefins, and cyclic olefins and vary the amount of additive to
optimize the product composition. It is the examiner's position that the claimed
process is an optimization of the process parameters disclosed by Rosinski et
al. with this optimization being within the level of ordinary skill in the art.
The examiner offers no other support for the proposition that the claims are obvious
over Rosinski alone or in combination with Young. We find nothing in either reference which
would suggest that one skilled in this art should monitor either the "C7 to C10 normal to C7 to
C10 cyclic olefin ratio" or "the methane and butadiene" produced by a cracking process with
a view to controlling the amount of ZSM-5 present in the claimed process.
The examiner bears the initial burden of presenting a prima facie case of
obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
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