Appeal No. 95-2715
Application 08/117,378
hydroxy substituent of the allyl carbon. The examiner has not addressed how the
combination of references suggests both the formation of an epoxide and ether of Formula
I. Rather the examiner contends that appellant has not adequately explained what favors
the reaction mechanism of forming the epoxide at the alcohol of the allyl alcohol. However,
we point out that an inventor need not understand the scientific mechanism in order to
place the invention into the patent system. Exxon Chem. Pats., Inc., v. Lubrizol Corp., 77
F.3d 450, 456, 37 USPQ2d 1767, 1772 (Fed. Cir. 1996)(citing Neuman v. Quigg, 877
F.2d, 1575, 1581, 11 USPQ2d 1340, 1345 (Fed. Cir. 1989))(observing that “it is not a
requirement of patentability that an inventor correctly set forth, or even know, how or why
the invention works”); Fromson v. Advanced Offset Plate, Inc., 720 F.2d 1565, 1570, 219
USPQ 1137, 1140 (Fed. Cir. 1983) “[I]t is axiomatic that an inventor need not comprehend
the scientific principles in which the practical effectiveness of his invention rests.”).
Since the examiner has failed to established a prima facie case of obviousness we
need not consider any evidence with respect to nonobviounesss.
REVERSED
MARY F. DOWNEY )
Administrative Patent Judge )
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