Appeal No. 2003-0808
Application No. 09/343,334
temperature ranges refer to the average temperature in
the hottest zone of the catalyst bed as determined by
thermocouple probes in the bed.
Because Cupples teaches a hydrogenation step that involves
“intimate contact of the total liquid oligomer with the catalyst
for a substantial period of time,” it would reasonably appear
that the polyalphaolefin of Cupples would necessarily or
inherently possess a bromine index within the appellants’
claimed range. In re Spada, 911 F.2d at 708, 15 USPQ2d at 1658;
In re Best, 562 F.2d at 1255, 195 USPQ at 433-34. Whether the
rejection is based on inherency under 35 U.S.C. § 102 or on
obviousness under 35 U.S.C. § 103, jointly or alternatively, the
burden of proof is the same, and its fairness is evidenced by
the PTO’s inability to manufacture products or to obtain and
compare prior art products. In re Best, 562 F.2d at 1255, 195
USPQ at 433-34.
We therefore hold that Cupples by itself establishes a
prima facie case of anticipation against appealed claim 1.
While the examiner’s rejection of appealed claim 1 has been made
under 35 U.S.C. § 103, a prior art disclosure that anticipates
under 35 U.S.C. § 102 also renders the claim obvious under 35
U.S.C. § 103, for anticipation is the epitome of obviousness.
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