Appeal No. 1995-3054
Application No. 08/059,384
The claims on appeal are directed to a process for
producing 2-chloro-5-chloromethyl-pyridine comprising four
distinct steps carried out with specific reactants in a
particular sequence. According to the examiner (Answer, pp.
7-8):
Hendrickson teaches all four steps. Lindel shows an
example of the instantly claimed step A. The
Examiner does not rely upon more of the Lindel
reference. Jelich shows the instantly claimed steps
C and D (being conducted under similar conditions).
. . . The product is known and has a valuable
utility. The starting reactants are known. Steps
A, B and C are taught in one-half of the diagram in
Hendrickson (see the right half of figure 18-3).
Steps C and D are taught in the left-half of the
Hendrickson diagram. Due to this, it is the
Examiner's position that the instantly claimed
process is obvius [sic, obvious] over the
combination of Hendrickson, Lindel and Jelich.
Appellants argue (Brief, p. 15):
[T]here is not any basis in the prior art of record
for combining and modifying Hendrickson et al.,
Lindel et al. and Jelich in the manner suggested by
the Examiner in her search for appellants'
invention. In In re Geiger, 815 F.2d 686, 688, 2
USPQ 2d 1276, 1278 (Fed. Cir. 1987), it was stated
that, "[o]bviousness cannot be established by
combining the teachings of the prior art to produce
the claimed invention, absence some teaching,
suggestion or incentive supporting the combination.
ACS Hospital Systems, Inc. v. Montefiore Hospital,
732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir.
1984)." With regard to appellants' invention, the
Examiner must have pointed to one or more sections
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