Appeal No. 95-2074
Application 08/170,985
one of ordinary skill in the art would have been motivated
to utilize the “high temperature” reducing agent of Merck,
namely silicon, in the high temperature reduction reaction
of Natoli in place of the aluminum disclosed therein to
obtain the instant results of appellants. This motivation
is derived from the reasonable expectation that the desired
reduction of the phosphine dihalide to tertiary phosphine
would result in the process of Natoli when using the silicon
reducing agent of Merck and especially because Merck
specifically suggests the equivalence of aluminum, used by
Natoli, and silicon as “reducing agent(s).”
We find the examiner’s position untenable.
In order to establish a prima facie case of obviousness, the
examiner has the initial burden of demonstrating that it would
have been obvious to one of ordinary skill in the art to
substitute a metal, such as aluminum, for the nonmetal, silicon,
in the method of reducing a phosphine dihalide to a tertiary
phosphine described by Natoli. Here, the examiner has not met
that burden.
In the case before us, the examiner has not established,
through the use of factual evidence, or sound scientific
reasoning, that it would have been obvious to those of ordinary
skill in the art to employ silicon in the reaction disclosed by
Natoli. For example, the examiner has not provided any reasons
as to why it would have been obvious to use the non-metal
silicon, when Natoli requires the use of (i) metals such as zinc,
manganese, aluminum and magnesium, preferably aluminum, and (ii)
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