Appeal 2007-1895
Application 10/719,489
We agree with Appellants’ analysis of Dilnot to the extent that the
mere conclusory characterization of a claimed process as “continuous” and
that of the reference process as “batch” does not per se establish a prima
facie case of obviousness of the claimed process over the prior art within the
meaning of § 103(a). It is well settled that “rejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977,
988, 78 USPQ2d 1329, 1336, quoted with approval in KSR Int'l Co. v.
Teleflex Inc., 127 S. Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007). This is
true where the difference between the claimed process and the prior art
process is “continuous” and “batch.” See, e.g., In re Korpi, 160 F.2d 564,
566, 73 USPQ 229, 230 (CCPA 1947) (claimed “continuous” alkylation
process did not distinguish over prior art references disclosing continuous
and batch alkylation processes), cited in Dilnot, 319 F.2d at 194, 138 USPQ
at 252.
Thus, the Examiner must provide factual findings from the combined
teachings of Bilgrien and Boudreau to support a conclusion that the claimed
process encompassed by claim 1 would have been prima facie obvious to
one of ordinary skill in this art over the applied references. Here, the
Examiner correctly identifies the difference between the claimed process
encompassed by claim 1 and the applied prior art is Bilgrien transfers the hot
flowable organosiloxane powder composition to a container rather than to a
bulk solids cooling device as specified in step B of claim 1. We further
agree with the Examiner’s determination that Bilgrien’s step of cooling the
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