Appeal No. 94-1868
Application 07/864,385
appellants to enhance the yields of terpenic ketone product, in
effect, places the cart before the horse. Here, it is only
appellants’ disclosure which suggests a single reaction zone
process, not the prior art. We have little doubt that one
ordinarily skilled in this art, working with the available
knowledge and expertise of the reactions in question, could have
designed a process as claimed. However, the mere fact that the
prior art processes could have been so modified to have been
carried out in the same reaction zone would not have made the
claimed process obvious unless the prior art suggested the
desirability of this modification. In re Gordon, 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). In short, we agree
with appellants that the combined disclosures of the relied upon
references fail to establish a prima facie case of obviousness
for the specifically claimed process on appeal. We are therefore
constrained to reverse the examiner’s rejection of the appealed
claims under 35 USC § 103.
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