Appeal No. 1998-2624
Application No. 08/696,578
In the appellant’s claimed process, however, the feed into
the absorber tower is not a "C3-and-lighter fraction." Instead,
the feed is a "hydrogenated washed compressed gas stream"
produced from steps (a) through (c) of appealed claim 1 or 23.
The examiner’s rejection does not account for this difference.
The remaining references have been applied only for the
purpose of addressing the additional features recited in the
dependent claims. However, they do not remedy the fundamental
deficiencies in the examiner’s combination of Mehra and Dunlop.
Because the examiner has not pointed to a specific
teaching, motivation, or suggestion in the prior art to combine
the references so as to arrive at the here claimed invention, we
hold that the examiner has engaged in impermissible hindsight
reconstruction using the appellant’s own specification as a
template. In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780,
1784 (Fed. Cir. 1992); Interconnect Planning Corp. v. Feil, 774
F.2d 1132, 1138, 227 USPQ 543, 547 (Fed. Cir. 1985); W. L. Gore
& Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303,
312-13 (Fed. Cir. 1983).
In summary, the examiner’s rejections of (i) claims 1
through 3, 5 through 13, 20, and 23 under 35 U.S.C. § 103(a) as
unpatentable over Mehra in view of Dunlop, (ii) claims 12 and 13
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