Appeal No. 2001-2490
Application No. 09/388,056
OPINION
A. The Rejections over Hupp
The examiner finds that Hupp discloses a process of removing
carbonyl compounds, such as ketones and aldehydes, from a
hydrocarbon mixture by contacting the mixture with a catalyst such
as clays, alumina, and silica-alumina, under conditions such as to
convert the carbonyl compounds into water (Answer, page 3). The
examiner recognizes that Hupp is “silent” with regard to two
limitations of claim 12 on appeal, namely the limitations that the
carbonyl compounds are contacted with a bed of particulate acidic
material and that the reaction products are deposited on said
acidic material (id.). However, the examiner maintains that the
catalysts of Hupp “would inherently be acidic materials” since
appellant discloses that alumina, silica-alumina and clays are
among the acidic catalysts useful in the claimed process (id.,
citing the specification, page 4, ll. 4-13). Furthermore, it is
the examiner’s position that, since Hupp is silent as to the
removal of water from the purification zone, water “would
inherently be deposited on the catalyst.” Id.
The examiner, when relying upon the theory of inherency, must
provide a basis in fact and/or technical reasoning to reasonably
support a determination that the allegedly inherent characteristic
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