Appeal No. 1998-1579
Application No. 08/388,532
be effective for separating sulfones from paraffin hydrocarbon
alkylation products (answer, pages 6-7). This argument is not
well taken because, first, the examiner has not provided
evidence that the extraction method which was known in the art
to be effective for separating ASO from sulfones would have
been reasonably expected by one of ordinary skill in the art
to be effective for separating sulfones from hydrocarbons in
general or paraffin hydrocarbon alkylation products in
particular. Second, in order for a prima facie case of
obviousness to be established, the applied prior art must be
such that it would have provided one of ordinary skill in the
art with both a motivation to carry out appellants’ claimed
process and a reasonable expectation of success in doing so.
See In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed.
Cir. 1991); In re O’Farrell, 853 F.2d 894, 902, 7 USPQ2d 1673,
1680 (Fed. Cir. 1988). The examiner’s argument is directed
toward only the reasonable expectation of success aspect of
this burden. The examiner has not explained why the applied
prior art would have motivated one of ordinary skill in the
art to carry out appellants’ claimed process. The record
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