Appeal 2007-2739
Application 11/106,321
the syntheses disclosed in Pepe and Berger, that fact does not undermine the
Examiner’s prima facie case.
Appellants argue that when the cited references are considered as a
whole, they do not provide the specific incentive required to render the
claimed process obvious (Br. 10-13). Specifically, Appellants urge that the
Examiner improperly relies on In re Kerkhoven, 626 F.2d 846 (CCPA 1980),
because the court in Kerkhoven declined to uphold the rejection of a process
claim since the claim “was directed to a process that involved much more
than simply combining references” (Br. 11; see also 12-13). Appellants
argue that the instant facts similarly require more than a simple combination
of references, because “the required conditions of the Pepe et al. reference,
namely, using alkoxide catalyst including tin containing compounds must be
totally eliminated from the reaction medium and the conditions changed to
meet the limitations in the appealed claims” (Br. 12).
Therefore, Appellants argue, Pepe “does not provide the suggestion or
motivation to eliminate using alkoxide metals including tin containing
compounds and substituting the claimed conditions” (id. at 13). Instead,
Appellants argue, Pepe teaches away from the claimed invention because it
teaches that the metal alkoxides and tin compounds are required cracking
catalysts (id. at 14).
We do not find this argument persuasive. We note that a “patent
composed of several elements is not proved obvious merely by
demonstrating that each of its elements was, independently, known in the
prior art.” KSR Int'l v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007). Thus, “it
can be important to identify a reason that would have prompted a person of
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