Appeal No. 99-2487
Application No. 08/834,051
points to nothing specific (and we find nothing independently) in
patentee’s disclosure to support the proposition that the
residual carbon in Mehta’s product would be in an activated form.
In light of the foregoing, it is apparent that the examiner
has failed to provide any evidence or scientific reasoning to
establish the reasonableness of his position that the residual
carbon of Mehta would possess the characteristic of being
activated as required by the rejected claims. Compare Ex parte
Skinner, 2 USPQ2d 1788, 1789 (Bd. Pat. App. & Int. 1991). It
follows that we cannot sustain the section 102/103 rejection of
claims 9-11 of Mehta.
We also cannot sustain the examiner’s section 103 rejection
of claims 1, 3, 4 and 7-9 as being unpatentable over Gonzalez-
Vilchez taken with Burger or his corresponding rejection of
claims 5 and 6 as being unpatentable over these references and
further in view of Mehta. As correctly indicated by the
appellants in their brief, the applied prior art would not have
motivated an artisan with ordinary skill “to use the binders of
Burger in the process of Gonzalez-Vilchez” (answer, page 3) as
proposed by the examiner. In this regard, the binders of Burger,
to which the examiner refers, are taught by patentee for use with
extensively carbonized material such as coal or coke (e.g., see
4
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