Appeal No. 94-3287
Application 07/835,152
consumption of unsaturated or saturated
hydrocarbon, the raw material, and maleic
anhydride, the product, caused during the
reaction on the inside wall of the reactor.
The appealed claims distinguish over Umemura by limitations
involving the previously mentioned certain process conditions.
More specifically, independent claims 1, 26 and 27 respectively
contain limitations directed to certain pressures, surface to
volume ratios, and hydrocarbon mixtures which are not taught by
Umemura. The examiner at least implicitly concludes that it
would have been obvious to operate Umemura’s process under these
conditions. We cannot agree.
To support an obviousness conclusion under § 103, a
reference must contain enabling methodology for practicing the
claimed invention, a suggestion to modify the prior art to
practice the claimed invention, and evidence suggesting that it
would be successful. In re O’Farrell, 853 F.2d 894, 902, 7
USPQ2d 1673, 1680 (Fed. Cir. 1988). In the case before us, the
Umemura reference evidence adduced by the examiner does not
provide the suggestion and expectation of success which are
essential components of a proper obviousness conclusion.
Concerning the issue of suggestion, we emphasize that
Umemura contains no disclosure regarding the specific, previously
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