Appeal No. 96-1770
Application No. 08/296,307
OPINION
The examiner finds that Porter discloses the application
of organotin compounds with organosilicon compounds to metal
substrates in order to prevent coke deposition on the metal
surfaces of thermal cracking reactors (Final Rejection, page
3, citing Porter, column 2, lines 35-36; 68-69; column 3,
lines 38-44; 38[sic]-65; column 5, line 58-column 6, line
8). The examiner states that Porter teaches the improvement
obtained by adding organotin compounds to the organosilicon
(Id., citing Porter, Table 1, column 9, lines 40-45).
The examiner concludes that, since applicants do not
perform any different process steps than the reference, the
result observed “must be inherent in the Porter process.”
(Id.). Although the examiner does not mention inherency in
the Answer, the examiner arrives at the same conclusion:
Porter as well as the Appellant adds the two
compounds and apply the mixture to cracking
equipment surfaces, to prevent coke deposition. . . .
[R]egardless of the number of given variables the
appellants define, they employ the same steps as
they did in the Porter reference. (Answer, pages 3-
4).
Apparently the examiner is basing this conclusion on the
premise that, since the steps in the claims and the prior art
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