Appeal No. 98-3017 6
Application No. 08/437,986
claimed invention would select the elements from the cited prior art references for
combination in the manner claimed. We determine that there is no reason, suggestion,
or motivation to combine the references in the manner proposed by the examiner.
Accordingly, the examiner has not established a prima facie case of obviousness and the
examiner's rejection of claims 1 through 12 under 35 U.S.C. § 103 is not sustained. In
re Rouffet, 149 F.3d 1350, 1355, 47 USPQ2d 1453, 1455 (Fed. Cir. 1998).
The rejection under section 112, first paragraph
It is the examiner’s position that the phrase “substantially complete conversion
of non-aromatic compounds to hydrocarbons lighter than ethylbenzene within the
pretreatment unit,” is not supported in the specification. The most pertinent portion of
the specification, page 10, lines 6-7 states that, “hydrocracking of the non-aromatics to
light compounds occurs so that they can easily be removed from the xylenes.” Original
claim 12 contains the phrase “causing a high level of non-aromatic compounds to lighter
hydrocarbons within the pretreatment unit and removing the lighter hydrocarbons from
the stream.” The record before us however is otherwise silent with respect to the
meaning of the original term “high level” and the newly inserted term, “substantially
complete.” Accordingly, we do not reach the Section 112 issue as it is not sufficiently
clear based on the record before us whether “substantially complete” is different from
the term “high level.”
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