Appeal No. 95-2715
Application 08/117,378
Claims 1-6 stand rejected under 35 U.S.C. 103 as unpatentable over Young in view
of Lecloux et al. and Young in view of Le Duc. We reverse.
Opinion
PTO has the burden, via the examiner, to establish a prima facie case of
obviousness. In re Lowry, 32 F.3d 1579, 1584, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994);
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). In our view
the examiner has failed to sustain her burden.
Young is directed to a process for the preparation of epoxides by
electrolytically oxidizing olefins in an electrolyte, which contains a soluble hydroxy
compound and a soluble halide (col. 1, line 29- column 4, line 21). Young identifies soluble
olefins at column 1, lines 51-61 but does not disclose an allyl alcohol as one of the olefins.
Lecloux and Le Duc, respectively, teach the use of allyl alcohol and allyl chloride as an
olefin reactant in their processes for the production of epoxides. The examiner concludes
that one of ordinary skill in the art at the time the invention was made would have found it
obvious to replace Young's olefin either with an allyl alcohol of Lecloux or an allyl type
compound of Le Duc because the substitution is that of an art recognized equivalent. We
disagree.
Appellant correctly points out that Young and Le Duc are directed to electrolytic
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