Appeal No. 2007-0161
Application No. 09/797,287
Claim 10 stands rejected under 35 U.S.C. § 103(a) over Rentschler.
Claim 10 recites a method wherein the groundwater is heated to a temperature
of 60ºF to 200ºF. The examiner argues that this temperature range is inherently
described by the "slight heating" of air in Rentshler. According to the examiner, one
of ordinary skill in the art at the time of the invention would understand that below
ground temperatures are essentially constant for a given depth of ground and at a
depth at which MTBE (methyl tert-butyl ether) is found the groundwater would be 50-
60ºF.
Appellant contends that the examiner cites no evidence in Rentschler that
temperatures in this range would be met by the slight heating of air performed in
Rentschler. Reply Brief, page 4. We are not persuaded by appellant's arguments.
The examiner relies on the knowledge of one of ordinary skill in the relevant
art as a basis for this rejection, i.e., that below ground temperatures are essentially
constant for a given depth of ground and at a depth at which MTBE (methyl tert-butyl
ether) is found the groundwater would be 50-60ºF. To reach a non-hindsight driven
conclusion as to whether a person having ordinary skill in the art at the time of the
invention would have viewed the subject matter as a whole to have been obvious in
view of multiple references, the Examiner must provide some rationale, articulation,
or reasoned basis to explain why the conclusion of obviousness is correct. The
requirement of such an explanation is consistent with governing obviousness law and
helps ensure predictable patentability determinations. In re Kahn, 441 F. 3d 977,
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