Appeal No. 1996-3423
Serial No. 08/314,471
obviousness must also address. The claimed process is 3
directed not to any objective but to a particular one,
that is, to increasing the combined yield of gasoline and
light cycle oil. This necessarily means that appellants
are limiting the scope of the claim to obtain this
result. Since all the claims on appeal contain this
limitation, it is dispositive of the prima facie case of
obviousness for all the claims.
The claimed method, therefore, in simplified terms,
calls for improving the catalytic cracking process of a
known oil feed containing nickel, vanadium, antimony and
zirconium, by adding boron "thereby causing an increase
of the combined yield of gasoline and light cycle oil
produced in said process.” It is with this construction
of the claim in mind that we now analyze the rejection
for obviousness.
3"... all factual differences which may be properly noted in any
portion of a claim must be included within the basis for comparison with
the prior art if we are to properly evaluate the differences between the
invention defined in a claim and the teachings of a reference. The
command of 35 U.S.C. ' 103 is to compare the invention as a whole with
the prior art. Absent a failure of the applicant to comply with 35
U.S.C. ' 112, we think every portion of the appealed claims must be
considered in determining the invention as a whole in arriving at our
decision as to obviousness required by a rejection under section 103."
In re Duva, 387 F.2d 402, 407, 156 USPQ 90, 94 (CCPA 1967).
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