Appeal No. 2005-2465
Application 10/293,373
oxygen groups in the resid of the” reference (answer, pages 4-5). The examiner further finds that
“[t]he declaration did not compare data to the closest prior art ([British Petroleum]) in which the
oxidizing step is operated at 4 hours,” the showing instead based on a comparison of processes in
which the oxidation step is carried out “at 3 hours” and “at 6 hours,” and thus, “it is unclear if a
free-flowing shot coke is produced at 4 hours” (id., page 5).
We agree with the examiner that the processes reported in the Siskin declaration do not
constitute a comparison between the claimed invention encompassed by claim 1 and the closest
prior art which is the British Petroleum Example per se. See generally, In re Burckel, 592 F.2d
1175, 1179, 201 USPQ 67, 71 (CCPA 1979) (the claimed subject matter must be compared with
the closest prior art in a manner which addresses the thrust of the rejection); In re Merchant,
575 F.2d 865, 868, 197 USPQ 785, 787 (CCPA 1978). Indeed, we find no side-by-side
comparison of the delayed coking process as claimed in the appealed claims and as described in
the reference Example, which is required to patentably distinguish the former over the specific
process of the latter. See In re Dunn, 349 F.2d 433, 439, 146 USPQ 479, 483 (CCPA 1965)
(“[W]e do not feel it an unreasonable burden on appellants to require comparative examples
relied on for non-obviousness to be truly comparative. The cause and effect sought to be proven
is lost here in the welter of unfixed variables.”).
In addition to the difference in oxygen gas contact time found by the examiner, we find
that the contacting temperature in the reported processes is over a broad range while the
temperature is 204.4°C in the reference process. Furthermore, it is not apparent if the vacuum
resid starting material having the properties listed in declaration Exhibit A is reasonably that
described in the reference Example, the only reference point being a vanadium content of 13.7
ppm in the former and 13 ppm in the latter. Moreover, even if the processes reported in the
declaration are held to be comparative, we fail to find that the description of the results (¶¶ 8 and
9) provides assurance that the product “having a coarse mosaic (5-10µm) and small domains”
prepared with an air contact “period of there hours” over the specified temperature range in
process “b)” falls outside of the product specified in appealed claim 1. This is because, as we
found above, the written description in the specification describes products falling within claim 1
include those having “micro-domains having an average size of about 1 to 10 µm, preferably
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