Appeal No. 2000-0344
Application No. 08/718,408
have been obvious to use Neumann’s ruthenium -based catalyst in the process
disclosed by either of Pearson or Muzart “with reasonable expectation of
obtaining the desired product (i.e., allylic oxidation of an alkene).” Id., pages 4, 5.
Appellants argue that, even with a model substrate, the ruthenium -based
catalyst disclosed by Neumann gave only poor yields of the desired product
accompanied by a complex mixture of unwanted by-products. Appeal Brief,
pages 4-5. Thus, Appellants argue, the prior art would not have led a person of
ordinary skill in the art to combine the ruthenium-based catalyst disclosed by
Neumann with the chromium-catalyzed oxidation processes disclosed by
Pearson and Muzart.
“In proceedings before the Patent and Trademark Office, the Examiner
bears the burden of establishing a prima facie case of obviousness based upon
the prior art. ‘[The Examiner] can satisfy this burden only by showing some
objective teaching in the prior art or that knowledge generally available to one of
ordinary skill in the art would lead that individual to combine the relevant
teachings of the references.’” In re Fritch, 972 F.2d 1260, 1265, 23 USPQ2d
1780, 1783 (Fed. Cir. 1992) (citations omitted).
[I]dentification in the prior art of each individual part claimed is
insufficient to defeat patentability of the whole claimed invention.
Rather, to establish obviousness based on a combination of the
elements disclosed in the prior art, there must be some motivation,
suggestion or teaching of the desirability of making the specific
combination that was made by the applicant.
In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d 1313, 1316 (Fed. Cir. 2000).
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