Ex Parte Sherman et al - Page 7

                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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