Appeal No. 2002-1864
Application No. 09/206,208
It is incumbent upon the examiner, when proposing a
combination or modification of references, to identify some
suggestion to combine the references or make the modification.
See In re Mayne, 104 F.3d 1339, 1342, 41 USPQ2d 1451, 1454 (Fed.
Cir. 1997). As correctly argued by appellants (Brief, pages 7-10;
Reply Brief, page 3), Eberly is not directed to MFI-type catalysts
and only suggests silica/alumina mole ratios much lower than those
required by EP ‘060 (and much lower than those required in the
claims on appeal). Eberly does disclose that the catalysts are
useful in cracking processes (col. 1, ll. 64-71, and col. 9, ll.
55-61) and that higher silica/alumina mole ratios provide greater
stability to heat, steam and acid (col. 2, ll. 20-25). However,
these “higher” silica/alumina mole ratios suggested by Eberly are
ones such as 8:1 to 12:1 (col. 2, ll. 25-34), with examples as
high as 29:1 (Table IV, col. 8, l. 11). Eberly teaches heating a
catalyst in steam, followed by extraction with EDTA, results in a
catalyst with an “extremely high” silica/alumina mole ratio of
about 20 (see Table III, col. 7, ll. 18-37). The lowest
silica/alumina mole ratio suggested by EP ‘060 is 350 (see EP ‘060,
page 1, and the Answer, page 3, converting this value to an atomic
ratio of greater than 175). The examiner has not presented any
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