Appeal 2006-2994
Application 09/753,495
remove contaminants as suggested by Chavet, because the mixture in
Norman is similar to that of Chavet and, therefore, distilling would be
expected to be an effective separation method in the process of Norman
(Answer 4).
Appellants argue that, at best, the Examiner has established that it
might have been “obvious-to-try” a distilling step in Norman’s process (Br.
11-12). According to Appellants, the used oils processed by Norman and
Chavet are neither chemically nor physically similar (Br. 14). In particular,
Appellants argue that Norman’s process is designed to treat industrial oils
used in non-motor vehicle applications, while Chavet treats mixtures of oils
in variable proportions originating from various origins. These mixtures
may include industrial or engine lubricant oils containing various additives
used to provide the required specific characteristics for the contemplated
applications (Br. 13). Because of the differences in the starting oils,
Appellants maintain that none of the mixtures at any step in the Norman or
Chavet processes are physically or chemically similar (Br. 13). More
specifically, the presence of water, hydrocarbons, and/or contaminants at the
various stages of the respective processes changes the boiling point of the oil
and solubility of the contaminants within the oil (Br. 13). Thus, Appellants
assert that one of ordinary skill in the art at the time of the invention simply
would not have been motivated to combine the various processes of Chavet
and Norman in the manner claimed (Br. 13).
A proper analysis under § 103 requires, inter alia, consideration of
two factors: (1) whether the prior art would have suggested to one of
ordinary skill in the art that he should make the claimed composition or
device, or carry out the claimed process; and (2) whether the prior art would
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