Appeal No. 97-3640
Application No. 08/406,272
as disclosed in Ventriglio (U.S. 3,619,130; of record; Col. 1, lines 44-47), alkali
hydroxides are subject to moisture attack with subsequent caking thus severely limiting
(CO adsorption) capacity. The present invention, as claimed, specifically recites
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adding water to an oxygen-containing compound such as sodium hydroxide.
According to the Ventriglio teaching, the claimed invention cannot have much capacity
for CO removal. However, as discussed above, the present invention shows 57%
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CO removal capacity. The claimed invention is therefore surprising. The Examiner
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should have considered Ventriglio in favor of appellant's claims which are patentable in
view of Ventriglio disclosure. (Br. page 22, paragraph three)
There is nothing of record to indicate that the examiner has addressed the teachings of
Ventriglio. Where appellant has come forward with reasonable rebuttal, whether buttressed by
experiment, prior art references, or arguments, the entire merits of the matter are to be reweighed. In
re Hedges, 783 F.2d 1038, 228 USPQ 685 (Fed. Cir. 1986). Therefore, the issue is not ripe for a
decision on appeal. Accordingly, we vacate the provisional rejection of claims 1-11 and 13-25 under
the judicially created doctrine of obviousness-type double-patenting over claims 1-25 (now 1-3, 5-9
and 12-25) of copending Application no. 08/162,241 in view of Cheron. If prosecution is resumed on
the subject matter of these claims in a continuing application, the examiner should revisit this issue. In
so doing, the examiner should take care to consider and respond to appellant's rebuttal in its entirety.
The examiner accepts appellant's argument that claim 12 is separately patentable (Ans. page 2).
Having accepted that appellant is separately arguing claim 12, the examiner fails to present any
reasoning and/or evidence as to why the references disclose or suggest the limitation "wherein said
water-containing fluid is saturated with water." Therefore, we reverse the rejection of claim 12 under
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