Appeal No. 2006-1273
Application No. 10/420,400
A claimed invention cannot be patented “though the invention is not identically
disclosed … if the differences between the subject matter sought to be patented and the
prior art are such that the subject matter as a whole would have been obvious at the time
the invention was made to a person having ordinary skill in the art ….” 35 U.S.C.
§ 103(a). The legal determination as to whether a claimed invention would have been
obvious turns on underlying factual inquiries including: (1) the scope and content of the
prior art; (2) the level of ordinary skill in the art; (3) the differences between the claimed
invention and the prior art; and (4) objective evidence of nonobviousness. Graham v.
John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966). We review the
Examiner’s legal determinations and underlying factual findings de novo.
Initially we note that Appellants do not dispute the scope and content of the prior
art. Neither have they challenged the level of skill in the art, which can be gleaned from
the references themselves and from the prior art discussion in the ‘400 Application.
Further, the Appellants have not presented any objective evidence of nonobviousness.
Thus, we focus on the differences between the claimed invention and the prior art.
The Differences Between the Claimed Invention and König et al.
The claimed process is identical to that disclosed and claimed by König et al.,
except that Appellants’ claims specify a slightly different molar ratio of phenol to
phosphonium halide and the addition of the slightly soluble alcohol after the reaction is
completed rather than at the start of the reaction.
More specifically, in support of patentability, Appellants identify two differences
between the express teachings of König et al. and their claimed invention. These two
differences can be described as follows:
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