Appeal No. 94-3976
Application 07/891,484
molybdenum-oxide mixture” to be used as a catalyst; see Col. 3)
or Ellingboe (oxalyl chloride is an organic acid chloride which
“approaches in activity as a chlorinating or dehydrating agent,
inorganic chlorides as thionyl chloride or phosphorous
trichloride;” see col. 1) to substitute oxalyl chloride for Cl2,
HCl (anhydrous) or a trichlorinated C2 hydrocarbon used as a
chlorinating agent in the processes of Ghandhi and Wolf. Indeed,
the examiner has failed to explain why one of ordinary skill in
this art would have combined these references, see, e.g., In re
Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981)(“[T]he
test [for obviousness] is what the combined references would have
suggested to those of ordinary skill in the art.”), or to provide
any scientific reasoning which would explain the motivation of
one of ordinary skill in the art to select oxalyl chloride, which
is only functionally related to the chlorinating agents taught in
Ghandhi and Wolf, for use in the particular processes of these
references. In re Dow Chemical, 837 F.2d 469, 473, 5 USPQ2d
1529, 1531-32 (Fed. Cir. 1988).
We also reverse the examiner’s rejection of appealed claims
1 through 9 under 35 U.S.C. ' 103 as being unpatentable over Blum
taken with Morris. With respect to appealed claims 1 through 8,
we point out that one of ordinary skill in this art would not
find teachings relevant to processes of forming a chlorine-doped
silicon dioxide layer in Blum. Thus, the invention encompassed
by these appealed claims would not have been reasonably suggested
to one of ordinary skill in this art by this combination of
references. See In re Clay, 966 F.2d 656, 23 USPQ2d 1058, 1060-
61 (Fed. Cir. 1992)
With respect to appealed claim 9, even though the references
may be reasonably pertinent to the problem addressed by
re Bose Corp., 772 F.2d 866, 868-70, 227 USPQ 1, 2-4 (Fed. Cir.
1985); MPEP § 1203.
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