Appeal No. 2001-0849 Page 10
Application No. 08/990,120
analysis that explains how the prior art disclosures would lead one of ordinary skill to
modify the prior art process to thereby derive the claimed process. In doing so,
examiner should address every limitation in the claims and establish differences
between the claimed composition and the prior art and, if differences exist, explain
why the prior art provides substantial evidence supporting a prima facie case of
obviousness of the claimed composition. With respect to the issue of pH and
temperature ranges, examiner should consult MPEP 2131.03 (“Anticipation of
Ranges”) and 2144.05 (“Obviousness of Ranges”). In making the necessary
analysis, examiner should be mindful that the mere fact that the prior art could be
modified to obtain the claimed process does not make the modification obvious
unless the prior art suggested the desirability of the modification. In re Gordon, 733
F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). “To establish a prima
facie case of obviousness based on a combination of references, there must be a
teaching, suggestion or motivation in the prior art to make the specific combination
that was made by the applicant.” In re Dance, 160 F.3d 1339, 1343, 48 USPQ2d
1635, 1637 (Fed. Cir. 1998). It does not suffice to say that “[t]he motivation is to
produce a sulfoxide compound by oxidation of the corresponding sulfide compound”
as examiner has. Something in the prior art as a whole must suggest the
desirability of making a sulfoxide by, per the broadest claim (claim 1), oxidizing a
sulfide at a pH of from 0.5 to 5.0 and thus the obviousness of making that
combination. Lindemann Maschinenfabrik GmbH v. American Hoist and Derrick
Co., 730 F.2d 1452, 1462, 221 USPQ 481, 488 (Fed. Cir. 1984). Furthermore,
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