Appeal No. 96-2808
Application 08/102,708
weight favors unpatentability. In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993); In re Piasecki, 745 F.2d 1468, 1471-1473, 223 USPQ 785, 787-788 (Fed. Cir. 1984); In re
Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976). Accordingly, the rejection of
claims 31 and 39 is affirmed. Because our rationale for affirming the rejection of claims 31 and 39 differs
from that of the examiner, we denominate our affirmance as a new rejection to afford appellants the
procedural safeguards associated with 37 CFR § 1.196(b).
Claim 38 is directed to a composition comprising a mixture of 85% gasoline and 15% of an ether
product which is formed by the steps of preparing a blend of C -C alcohols and reacting the blend of
1 8
alcohols with isoamylene. Claim 38 is a product-by-process claim. As discussed supra, the patentability
of a product-by-process claim is based on the composition claimed, and not on the process of making it.
Both Buc and Bruderreck disclose that it is known in the art to add a t-amyl ether to gasoline (Buc: col.
1, lines 6-52; Bruderreck: col. 1, lines 56-57). Bruderreck discloses a composition comprising 85%
gasoline and 15% mixed t-butyl ethers. Leum discloses preparing an ether product by reacting one or more
alcohols with a branched olefin such as isobutylene or isoamylene (col. 1, lines 10-36) which would lead
one skilled in the art to conclude that a mixture of butyl or amyl ethers is formed. However, Leum fails to
disclose any use for his ethers. While Bruderreck discloses that a composition of gasoline and a mixture
of t-butyl ethers is known in the art, the patentee fails to suggest or teach a mixture of t-amyl ethers, even
though the patentee recognizes that both t-butyl and t-amyl ethers individually can be added to gasoline.
From these facts, we do not find that the prior art relied upon by the examiner, taken as a whole, would
-11-
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007