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. - 2 -Page: Previous 1 2 3 4 NextLast modified: November 3, 2007