Appeal No. 95-5067
Application 08/064,575
is necessary to select elements of various teachings in order
to form the claimed invention, we ascertain whether there is
any suggestion or motivation in the prior art to make the
selection made by applicant.” Interconnect Planning Corp. v.
Feil, 774 F.2d 1132, 1143, 227 USPQ 543, 551 (Fed. Cir. 1985).
There are “three possible sources for a motivation to combine
references: the nature of the problem to be solved, the
teachings of the prior art, and the knowledge of persons of
ordinary skill in the art.” In re Rouffet, 149 F.3d 1350,
1358-59, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998).
The examiner alludes to the problems of corrosive
materials and separation of large quantities of inorganic
salts (answer, pages 5 and 6) but the primary references fail
to disclose or teach these problems. The secondary reference 2
to Kricheldorf ‘83 appears to be the only reference that
discloses a problem with previous procedures because of the
need to purify the product from metal salts (page 2283). Of
course, this reference is not directed to the formation of
2 In fact, EP ‘114 does not even disclose or teach the use of alkali but employs
triethylamine as the base in the conventional condensation of an alcohol with a
fluorinated olefin (see pages 14 and 15).
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