Appeal No. 2000-0674
Application 08/867,511
the claimed invention as a whole, including each and every limitation of the claims, without
recourse to the teachings in appellants’ disclosure. See generally, In re Rouffet, 149 F.3d 1350,
1358, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998); Pro-Mold and Tool Co. v. Great Lakes Plastics
Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629-30 (Fed. Cir. 1996); In re Fine, 837 F.2d 1071,
1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988); In re Dow Chem. Co., 837 F.2d 469,
473, 5 USPQ2d 1529, 1531-32 (Fed. Cir. 1988). The requirement for objective factual
underpinnings for a rejection under § 103(a) extends to the determination of whether the
references can be combined. See In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433-34
(Fed. Cir. 2002), and cases cited therein.
On this record, we must agree with appellants that the examiner has not made out a prima
facie case of obviousness with respect to the claimed invention. The examiner submits that one
of ordinary skill in this art would have combined LaPierre with Reichmann and found therein the
motivation to include in the process of LaPierre “a hydrogenation catalyst prior to the
isomerization catalyst because Reichmann has taught that use of a hydrogenation catalyst in a
continuous xylene isomerization process reduces xylene loss” (answer, page 4). For the reasons
given by appellants in the brief and reply brief and the following, we cannot agree.
As pointed out by appellants, the catalyst system used by LaPierre makes use of two
different zeolite catalysts, each of which must contain “an amount of a noble metal effective to
increase the hydrogenative activity of the zeolite” (page 3, 21-27; see also page 4, lines 37-43).
Indeed, LaPierre is interested in addressing the problem presented by ethylbenzene as well as
paraffins in the loop manufacture of xylene (e.g., page 2, lines 40-57). We note that there is no
mention by LaPierre of a problem with olefins in the process stream.
As further pointed out by appellants, the two catalyst system of Reichmann uses a
hydrogenation catalyst to contend with the problem created by the formation of olefins by the
isomerization catalyst in the loop manufacture of xylenes, and in this respect teaches that the
position of the hydrogenation catalyst in the loop is after the isomerization catalyst even though
the process is illustrated with the hydrogenation catalyst in front of the isomerization catalyst in
order to treat the olefins present in the recycle stream for the isomerization catalyst (cols. 3-4).
2 Answer, pages 3-4.
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