Appeal 2007-2486
Application 10/429,369
the claimed subject matter may, in fact, be an inherent characteristic of the
prior art, the PTO possesses the authority to require the applicant to prove
that the subject matter shown to be in the prior art does not possess the
characteristic relied on. In re Best, 562 F.2d 1252, 1254-255, 195 USPQ
430, 433 (CCPA 1977). This burden is applicable to product and process
claims reasonably considered as possessing the allegedly inherent
characteristics. Id.
As we determined above, motivation is present for the combination of
Gunnerman’s ultrasonic sulfur removal process with Sorgenti’s hydrodesul-
furization process. We further note that Sorgenti discloses that nitrogen is
present is the petroleum feed being treated (Sorgenti, col. 10, ll. 5-10).
Therefore, when Gunnerman’s ultrasonic sulfur removal process is
combined with Sorgenti’s hydrodesulfurization process, inherently the
nitrogen in Sorgenti’s petroleum feed would be oxidized and reduced to
ammonia for removal according to the hydrodesulfurization process. Best,
562 F.2d at 1254-255, 195 USPQ at 433. In other words, the functional
limitations directed to nitrogen oxidation and removal of claims 1 and 8 are
inherently satisfied by the process resulting from the combination of
Gunnerman’s ultrasonic sulfur removal process with Sorgenti’s
hydrodesulfurization process. Id.
Appellant has the burden of proving that nitrogen is not inherently
removed by the process resulting from the combination of Sorgenti’s process
and Gunnerman’s process. Id. Appellant has not proffered any evidence
that nitrogen is not oxidized and subsequently reduced to ammonia using the
combined processes of Sorgenti and Gunnerman. Accordingly, Appellant
has not satisfied the burden.
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