Appeal No. 1996-3457
Application 08/200,595
pertaining to hydrocarbon cracking in certain specification Examples, in submitting that “the general
knowledge in the prior art regarding cracking processes is such that when taken with the albeit limited
discussion in appellants’ disclosure, it would enable one of ordinary skill in the art to practice the
invention without undue experimentation” (brief, page 3). Appellants further contend that from this
disclosure, “it is apparent that the catalysts [of the claimed compositions] are useful in catalytic cracking
processes” (id., pages 3-4). In response, the examiner alleges that “the catalyst composition utilized in
EP 0 385 246 is not the same as that utilized in the claimed invention” and that the specification
Examples do “not indicate or disclose any process conditions or parameters” (answer, pages 4-5).
We must agree with appellants. Indeed, it is clear from the disclosure that appellants rely on
the citation of EP 0 385 246 to establish that “fluid catalytic cracking (FCC) catalysts that contain a
bayerite/eta alumina component” are known and that appellants further disclose that certain problems
are presented when such fluid catalytic cracking catalysts are used “in commercial FCC cracking
units,” which are the problems addressed by appellants through the disclosed and claimed invention
(specification, pages 2-3, emphasis supplied; see also pages 5-6 and specification Examples 5-7).
Thus, in order to make out a prima facie case under this section of the statute, the examiner must show
that one of ordinary skill in the hydrocarbon cracking arts could not practice the claimed invention
based on the information supplied in appellants’ disclosure without undue experimentation, which
requires more evidence than merely pointing out that specific “process conditions or parameters” have
not been disclosed.
The examiner’s decision is reversed.
Reversed
JOHN D. SMITH )
Administrative Patent Judge )
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
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