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
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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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