Appeal No. 2004-1800
Application No. 10/100,522
Example fails to describe the inclusion of the co-feed of an alcohol or an ether.
There is no indication that the inclusion of an alcohol or ether co-feed, for the
purpose disclosed in Butter, would also function as required by the claimed
invention. A rejection premised on inherency cannot be established by probabilities
or possibilities. See In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA
1981). As stated in In re Rijckaert, 9 F.3d 1531, 1534, 28 USPQ2d 1955, 1957
(Fed. Cir. 1993) (quoting from In re Oelrich, 666 F.2d at 581, 212 USPQ at 326),
“[t]he mere fact that a certain thing may result from a given set of circumstances is
not sufficient [to establish inherency]”. Under these circumstance, we cannot
conclude that the Examiner has met the minimum threshold of establishing
inherency under 35 U.S.C. § 102 or obviousness under 35 U.S.C. § 103. Therefore,
the rejection of claims 1 to 4 under § 102 and § 103 is reversed.
The Examiner rejected claims 2, 3, 6-15 and 18 under 35 U.S.C. § 103(a) as
obvious over Butter; and claims 5, 16 and 17 under 35 U.S.C. § 103(a) as obvious
over the combination of Butter and Ladwig.
As stated above, the Examiner asserts that the alcohol or ether co-feed of
Butter would function the same as the claimed invention. The purpose of the
alcohol or ether co-feed in Butter is to provide water vapor to maintain the activity
of the zeolite catalyst. (Cols. 8-9). There is no indication that the alcohol or ether
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