Appeal No. 2004-1644
Application No. 10/071,341
Appellants cite In re Buehler, 515 F.2d 1134, 185 USPQ 781 (CCPA 1975).
(Rehearing request p. 1).
This is essentially the same argument Appellants presented in the
Reply Brief, page 1. Appellants’ citation to Buehler is not persuasive. In
Buehler the appellants’ claimed method involved doing what the cited
reference (Clark) tried to avoid. Specifically, Clark warned that the
method of the appellants’ claimed invention would produce
unacceptable results. In re Buehler, 515 F.2d at 1139, 185 USPQ at 785.
These facts are not the same as those in the present case on appeal. The
Allender references has not indicated that the hydrogenation of the
product from a dehydrogenation process would produce unacceptable
results. The indication that something is not necessary means that the thing
is not absolutely essential. A reference is available for all that it teaches,
not just the preferred embodiments, and a preferred embodiment is not a
“teaching away” from the unpreferred embodiment, i.e., an embodiment
indicated as not necessary. See In re Burckel, 592 F.2d 1175, 1179, 201
USPQ 67, 70 (CCPA 1979); In re Lamberti, 545 F.2d 747, 750, 192 USPQ 278,
280 (CCPA 1976); and In re Mills, 470 F.2d 649, 651, 176 USPQ 196, 198
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