Appeal No. 2004-0638
Application No. 10/038,975
impurity, acetaldehyde, present in the ethylene oxide feed.
However, we concur with the examiner that the "secondary"
references, particularly Delannoy and Kirk-Othmer, evidence that
the ethylene oxide feeds employed in the processes of the primary
references inherently possess acetaldehyde impurity levels within
the claimed range, i.e., greater than 50 ppm. For instance,
Kirk-Othmer expressly discloses a table for "HIGH-PURITY ETHYLENE
OXIDE" which demonstrates that purified ethylene oxide may
contain a maximum of 0.010% by weight acetaldehyde, or 100 ppm.
Hence, based on the evidence supplied by the examiner, we find it
reasonable to conclude that one of ordinary skill in the art
would have understood the processes of the primary references to
utilize an ethylene oxide feed containing more than 50 ppm
acetaldehyde. It is well settled that when a claimed process to
appears to be substantially the same as a process disclosed by
the prior art, the burden is on the applicant to prove that the
prior art process does not necessarily or inherently possess
characteristics attributed to the claimed process. In re Spada,
911 F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); In re
Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). While
appellants rely upon the Declaration of Lawrence Candela, we
agree with the examiner that the Declaration is not of sufficient
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