Appeal No. 2002-2266 Page 7
Application No. 09/366,477
disclosed as containing hydrogenation metal and one in which the catalyst contains the
hydrogenation metal such that the process becomes a one-stage process. It would have been
obvious to one of ordinary skill in the art to combine the first embodiment of Chang, which
requires a second stage removal of ethylbenzene, with the separate step of ethylbenzene removal
taught by Abichandani.
Appellants further argue that the Examiner’s reliance on Ex parte Wu, In re Larson, and
In re Kuhle is misplaced (Brief at 8-9; Reply Brief at p. 4).1 The Examiner relied on these cases
for the proposition that eliminating a component along with its function would not impart
patentable distinctness which is otherwise absent (Answer at p. 5). The cases support this
proposition. Wu, 10 USPQ2d at 2032; Larson, 340 F.2d at 969, 144 USPQ at 350; Kuhle, 526
F.2d at 555, 188 USPQ at 9. In the present case, Chang recognizes this concept as this reference
describes the catalyst without the hydrogenation metal and then describes a second embodiment
in which the hydrogenation metal is added for the function of reducing ethylbenzene. One of
ordinary skill in the art would recognize from the disclosure of Chang that the hydrogen metal
with its ethylbenzene removal effect is an option, not a requirement, in the toluene
disproportionation stage.
We conclude that the Examiner established a prima facie case of obviousness with
respect to the subject matter of claim 1-20 over Abichandani and Chang.
1Ex parte Wu, 10 USPQ2d 2031 (Bd. Pat. App. & Int. 1989); In re Larson, 340 F.2d 965, 144 USPQ 347
(CCPA 1965); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975).
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