Appeal No. 2002-1364 Page 7
Application No. 09/402,761
that the cited prior art would not have led a person having ordinary skill to the invention
recited in claim 11 including the specific order or sequence of combining reagents
required by that claim. Therefore, Ex parte Rubin is distinguishable from the present
case.
MPEP § 2144.04 IV. C. also cites In re Burhans, 154 F.2d 690, 69 USPQ 330
(CCPA 1946) and In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930), for the
proposition that selecting any order of performing process steps or mixing ingredients
would have been prima facie obvious. Again, the examiner has not favored the record
with a discussion of Burhans or Gibson. The examiner has not compared the facts in
those cases with the facts before us, or explained why those cases should be
controlling. In this regard, we note that (1) the present case involves unpredictable
factors including catalytic chemistry; and (2) the examiner has not compared the degree
of unpredictability of the factors involved in the present case with those involved in
Burhans (method of making genuine whole wheat flour) or in Gibson (process of
forming a mix for brake shoe fillers). See In re Angstadt, 537 F.2d 498, 503,
190 USPQ 214, 218 (CCPA 1976) ("many chemical processes, and catalytic processes
particularly, are unpredictable"); and In re Mercier, 515 F.2d 1161, 1168, 185 USPQ
774, 779 (CCPA 1975) ("[t]he unpredictability of catalytic phenomena has long been
recognized by this court").
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