Appeal 2007-0121
Application 10/324,594
Claim 39 is directed to a desulfurized fluid described by a process by
which the desulfurized fluid is obtained. Claim 39 does not require that the
desulfurized fluid possess any particular sulfur level or that the desulfurized
fluid have any particular composition.
Both of the applied references disclose a sorbent that can be used for
desulfurizing fluids. Nelson discloses that the solid sorbent thereof is useful
in treating gaseous fluid to remove, inter alia, sulfur oxides, hydrogen
sulfide, and/or carbonyl sulfide therefrom (col. 1, ll. 14-24). Thus, Nelson
teaches the formation of a desulfurized gas/fluid. Khare discloses that the
sorbent disclosed therein can be used for removing sulfur from diesel fuel or
cracked gasoline (col. 1, ll. 6-13). Khare furnishes an Example wherein a
desulfurized cracked gasoline is formed by treatment with a sorbent
(Example 1).
Given the above-noted disclosures of Nelson and Khare, we agree
with the Examiner that the applied references furnish sufficient teachings to
render claim 39 at least prima facie obvious. After all, whether a rejection is
under 35 U.S.C. § 102 or § 103, when Appellants’ product and that of the
prior art appear to be identical or substantially identical, the burden shifts to
Appellants to provide evidence that the prior art product does not necessarily
or inherently possess the relied upon characteristics of Appellants’ claimed
product. See In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA
1980); In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-434 (CCPA
1977); In re Fessmann, 489 F.2d 742, 745, 180 USPQ 324, 326 (CCPA
1974). The reason is that the Patent and Trademark Office is not able to
manufacture and compare products. See Best, 562 F.2d at 1255, 195 USPQ
at 434. This burden shifting is especially appropriate here where appealed
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