Appeal No. 95-4216
Application 08/035,076
success in doing so. See In re Vaeck, 947 F.2d 488, 493, 20
USPQ2d 1438, 1442 (Fed. Cir. 1991); In re O’Farrell, 853 F.2d
894, 902, 7 USPQ2d 1673, 1680 (Fed. Cir. 1988); In re Longi,
759 F.2d 887, 892-93, 225 USPQ 645, 648 (Fed. Cir. 1985).
Even if, as asserted by the examiner, one of ordinary
skill in the art would not have expected the presence of a
solution of a copper compound to adversely affect Cowfer’s
oxychlorination reaction, the examiner’s argument is not
persuasive. The reason is that the examiner has not
explained, and it is not apparent, why, in view of Cowfer,
wherein the reaction takes place in the presence of a
fluidized solid catalyst (col. 1, lines 30-37; col. 2, lines
16-18), one of ordinary skill in the art would have been
motivated to add cupric chloride solution to the catalyst.
For the above reasons, we conclude that the examiner has
not carried his initial burden of setting forth a prima facie
case of obviousness of the invention recited in any of
appellants’ claims. Consequently, we do not sustain the
rejection under 35 U.S.C. § 103.
Since no prima facie case of obviousness has been
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