Ex parte BUYSCH et al. - Page 7




                   Appeal No. 1996-2340                                                                                                                             
                   Application 08/108,854                                                                                                                           


                   method described in representative claim 23 would have been obvious to one of ordinary                                                           
                   skill in the art at the time the invention was made.  Neither the rejection, nor the examiner’s                                                  
                   response to the appellants’ arguments, even mention the limitations set forth in the                                                             
                   referenced claim.  Moreover, in our reading of the references, we do not find that they                                                          
                                                                                                               2                                                    
                   teach or suggest the use of active carbon in the claimed amount.   We remind the                                                                 
                   examiner that a conclusion of obviousness must be based on fact, and not unsupported                                                             
                   generalities.  In re Freed, 425 F.2d 785, 787, 165 USPQ 570, 571 (CCPA 1970); In re                                                              
                   Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389                                                                    
                   U.S. 1057 (1968).  Accordingly, since we cannot find any rational basis for the examiner’s                                                       
                   conclusion that the invention described in representative claim 23 would have been                                                               
                   obvious on one of ordinary skill in view of the applied prior art of record, we reverse the                                                      
                   rejection of claims 23 through 32.                                                                                                               












                            2See page 6, last full sentence of Hoffmann, the English translation of record, which                                                   
                   reads, “Active carbon can be used as an additive, generally in a quantity of 0.05 to 3,                                                          
                   preferably 0.2 to 2 wt.-% depending upon the initial sustance II [(the alcohol)].”                                                               
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