Appeal No. 2003-0808
Application No. 09/343,334
In re Baxter Travenol Laboratories, 952 F.2d at 391, 21 USPQ2d
at 1284-85; In re Fracalossi, 681 F.2d at 794, 215 USPQ at 571;
In re May, 574 F.2d at 1089, 197 USPQ at 607.
Regarding separately argued claims 6 and 9, the appellants
are correct in pointing out that Cupples teaches distillation
after hydrogenation. (Column 6, lines 2-4; column 6 line 67 to
column 7, line 1; column 7, lines 23-26 and 58-61.) However, we
disagree with the appellants that the prior art would not have
suggested a further hydrogenation step.
Although Cupples does not teach further hydrogenation
following distillation, “[i]t has long been known that
hydrogenation to achieve [sic, obtain] a PAO which is
predominantly saturated achieves [sic, provides] a more
desirable product, [i.e.,] one that is more stable to oxidation
and heat.”5 (Specification, page 2, lines 8-10.) Accordingly,
in the case where the distilled oligomer of Cupples was not
hydrogenated to completion, one of ordinary skill would have
found it prima facie obvious to further hydrogenate the
distilled product in order to improve the stability of the
product to oxidation and heat.
5 See In re Hedges, 783 F.2d 1038, 1039-40, 228 USPQ 685,
686 (Fed. Cir. 1986).
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