Appeal No. 95-2074
Application 08/170,985
a metal which has a redox potential of -0.75 to -2.5V. Natoli,
p. 5, the penultimate sentence. Rather, we find unsupported
allegations, throughout the Answer, that a single phrase in
Merck, would have motivated one of ordinary skill in the art to3
employ silicon in the type of reaction taught by Natoli, and that
such persons would have had a reasonable expectation of success
in obtaining the claimed results.
The appellant, on the other hand, has at least provided some
evidence that the phrase in Merck upon which the examiner relies
so heavily, refers to use of silicon as a reducing agent in the
metallurgical industry and at temperatures which greatly exceed
the claimed 300EC limitation. The examiner has misunderstood the
appellant’s argument and, consequently, incorrectly dismissed
this evidence as being irrelevant. However, we find from a fair
reading of the appellant’s evidence that it indicates that
referenced phrase in Merck would not necessarily have suggested
to one of ordinary skill in the art, the interchangeability of
aluminum and silicon in the claimed method. Moreover, the only
suggestion on this record for the use of silicon in the reduction
3Merck states that silicon may be used “[a]s a reducing
agent like aluminum in high temp reactions.” Merck, p. 1099.
4
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