Appeal No. 2002-0404
Application No. 08/859,143
skill in the art to modify Dougherty’s process in the manner as
proposed in the answer. In re Rouffet, 149 F.3d 1350, 1359, 47
USPQ2d 1453, 1459 (Fed. Cir. 1998) (“[T]he Board must explain
the reasons one of ordinary skill in the art would have been
motivated to select the references and to combine them to render
the claimed invention obvious.”); In re Dembiczak, 175 F.3d 994,
999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999) (“[T]he best defense
against the subtle but powerful attraction of a hindsight-based
obviousness analysis is rigorous application of the requirement
for a showing of the teaching or motivation to combine prior art
references.”).
Accordingly, we hold that the examiner has failed to
establish a prima facie case of obviousness within the meaning
of 35 U.S.C. § 103. In re Piasecki, 745 F.2d 1468, 1471-72, 223
USPQ 785, 787-88 (Fed. Cir. 1984).
Claims 11-17: Erpenbach or Aldrich
The examiner points out that Erpenbach and Aldrich both
teach high purity butyl acrylate products. (Answer, page 5.)
The examiner admits, however, that Erpenbach is silent regarding
butyl acetate purity and that Aldrich does not teach the recited
butyl acetate and/or butyl acetate purity levels. (Id.)
Nevertheless, the examiner states: “[I]t is reasonable to
conclude that the butyl acrylate product disclosed by the
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