Appeal No. 1999-1180
Application No. 08/751,557
Thus, we find ourselves in complete agreement with the
examiner's analysis. (Examiner's answer, pages 3-4.) From our
perspective, one of ordinary skill in the art would have been
led to use Morikawa's hydrogenation catalyst based on (i)
palladium and (ii) zirconium, niobium, or tantalum to carry out
Moore's process, thus arriving at a method encompassed by
appealed claim 1, in order to improve the life and performance
of the hydrogenation catalyst. As required under 35 U.S.C.
§ 103, the reasonable expectation of success comes from the
collective teachings of the prior art and not the appellants'
own disclosure. Here, Moore would have suggested to one of
ordinary skill in the art that any hydrogenation catalyst may be
used for the disclosed hydrogenation reaction, and Morikawa
would have motivated one of ordinary skill in the art to use a
hydrogenation catalyst within the scope of appealed claim 1 to
obtain advantages in terms of catalyst life and performance. As
stated by the examiner (examiner's answer, page 5), the
hydrogenation reaction described in Morikawa is so similar to
the hydrogenation reaction described in Moore that one of
ordinary skill in the art would have prima facie expected
Morikawa's catalyst to provide the same or substantially the
same results when used in Moore's process.
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