Appeal No. 96-2808
Application 08/102,708
Appellants argue that the references as combined by the examiner do not establish a prima facie case of
obviousness because “these references fail to teach or suggest ... the combination of taking a specified
mixed alcohol ... reaction stream, forming a mixed ether reaction product from that stream and blending
that mixed ether product with gasoline ...” (brief: p. 10). Appellants further argue that the combination of
Bruderreck, Buc and Leum lacks “any suggestion that the process of the [Leum] patent be joined with the
processes described in the [Bruderreck] patent, and then modified to specifically use a C -C alcohol
1 8
containing feed stream” (brief: p. 10). Appellants also argue that Leum never mentions mixing his ethers
with gasoline and that Bruderreck and Buc “do not mention a step of using a mixed alcohol stream to form
the mixed ethers” (brief: p. 10). Appellants conclude that “[s]ince each of appellants’ claims requires such
a mixed alcohol stream used to form a mixed ether product which is then blended with gasoline, no case
of obviousness is made out” (brief: p. 10).
Upon careful review of the record, we must agree with appellants. The examiner has not satisfied
her burden of establishing a prima facie case of obviousness with respect to claims 21-26, 29, 30 and 38
by showing that some objective teaching or suggestion in the prior art taken as a whole or that knowledge
generally available to a person of ordinary skill in the art would have led that person to combine the relevant
teachings of the applied references in the proposed manner to arrive at the claimed invention without
recourse to the teachings in appellant*s disclosure. See In re Dow Chemical, 837 F.2d 469, 473, 5
USPQ2d 1529, 1531-1532 (Fed. Cir. 1988); In re Fine, 837 F.2d 1071, 1074-1076, 5 USPQ2d 1596,
1598-1600 (Fed. Cir. 1988).
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