Appeal 2006-2994
Application 09/753,495
also have revealed that in so making or carrying out, one of ordinary skill
would have a reasonable expectation of success. In re Vaeck, 947 F.2d 488,
493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991). Both the suggestion and the
reasonable expectation of success “must be founded in the prior art, not in
the applicant's disclosure.” Id. Appellants have persuasively argued that,
given the differences in the used oils treated by Chavet and Norman, one of
ordinary skill in the art at the time of the invention would not have been
motivated to combine their teachings to achieve the claimed invention. The
Examiner is reminded that the burden is on the PTO to provide a detailed
analysis of the prior art and reasons why one of ordinary skill in the art
would have possessed the knowledge and motivation to make the claimed
invention. See In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed.
Cir. 2006). Merely stating that “each reference discloses used oils from
industrial applications” (Answer 6) is not sufficient to meet this burden. At
a minimum, the Examiner was obligated to comment on those portions of
Norman and Chavet relied upon by Appellants to distinguish their respective
mixtures (see Br. 12-13).
The rejection of claims 7-9, 13, 16-22, 25-28, 31, 32, 34-36, and 39-
42 as unpatentable over Norman in view of WO ‘928 is reversed.
Claims 25-28, 31, 32, 34-36, 41 and 42 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over WO ‘928.
The Examiner relies on Chavet for a disclosure of the invention as
claimed with the exception of the specific distillation conditions and
amounts of base or glycol. The Examiner essentially maintains that these
features are result effective variables. Therefore, selection of appropriate
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