Appeal No. 1997-0436
Application 08/277,692
1073 (Fed. Cir. 1987). Indeed, under the facts of this case, we find that the language of the preamble
does not limit the scope of claim 1 to a “compound” as opposed to the “oil” reaction product mixture,
or provide any further limitation on the “oil” mixture through the recitation that the same is “suitable for
use as a compressor unit.”
In applying Seiki to claim 1 as we have interpreted it above, we fail to find in the sole portion of
this reference disclosing an ester of a polyoxylalkylene glycol, that is, formula (II) wherein one or more
of R5, R7, or R9 is “an acyl group having 1 to 20 carbon atoms” (page 3), any suggestion to one of
ordinary skill in this art to form a mixture which would contain one or more of the esters so disclosed in
the reference, which could be formed by the reaction of said glycol and suitable monocarboxylic acids,
and esters formed by the reaction of said glycol and polycarboxylic acids with the reasonable
expectation of arriving at the claimed “oil” mixture. Accordingly, in the absence of evidence or scientific
reasoning advanced by the examiner establishing that Seiki would have provided such a suggestion and
reasonable expectation of success in the absence of appellants’ disclosure, we reverse this ground of
rejection because the examiner has failed to establish a prima facie case of obviousness of the claimed
invention encompassed by appealed claim 1 over the reference within the meaning of § 103. 4 In re
Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991), citing In re Dow Chemical
Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531(Fed. Cir. 1988) (“Both the suggestion and the
reasonable expectation of success must be found in the prior art, not in the applicant’s disclosure.”).
Turning now to the ground of rejection under § 101, we find that the language of appealed claim
6 when given its broadest possible interpretation in light of appellants’ specification as it would be
interpreted by one of ordinary skill in this art, Morris, supra, simply specifies a “use” and not a
“process, machine, manufacture, or composition of matter, or any new or useful improvement thereof”
for which a patent may be obtained as provided in this statutory provision. Indeed, the “[u]se of the
4 We suggest that any further prosecution of the appealed claims before the examiner include
consideration of the issue of whether these claims comply with the requirements of 35 U.S.C. § 112,
second paragraph. We note in this respect that it appears that claim 5 and claims dependent thereon fail
to find antecedent basis in any of claims 1 through 4 for “the hydrocarbon” specified in claim 5, and
neither claim 5 nor the claims on which it depends recite “a compound (X)” as specified in claim 10
which is dependent on claim 5.
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