Appeal No. 1996-2340
Application 08/108,854
catalyst. We find these arguments unpersuasive.
We point out that the references were relied on in combination and that the
appellants cannot demonstrate non-obviousness by attacking the references individually.
In re Betz, 418 F.2d 942, 947, 163 USPQ 691, 695 (CCPA 1969);
In re Young, 403 F.2d 754, 757, 159 USPQ 725, 728 (CCPA 1968). Here, the
appellants’ arguments do not address the combined teachings of the references which, in
our view, would have suggested the method described in representative claim 1 to those
of ordinary skill in the art at the time the invention was made. In re Nilssen,
851 F.2d 1401, 1403, 7 USPQ2d 1500, 1502 (Fed. Cir. 1988); In re Sernaker,
702 F.2d 989, 995, 217 USPQ 1, 6 (Fed. Cir. 1983); In re Keller, 642 F.2d 413, 425, 203
USPQ 871, 881 (CCPA 1981)(The test for obviousness is not the express suggestion of
the claimed invention in the reference, but rather what the combined teachings of the
references would have suggested to those of ordinary skill in the art). The only difference
between the method taught by Hoffmann and the method described in representative claim
1, is that Hoffmann teaches reacting aliphatic or cycloaliphatic alcohols with phosgene,
rather than an aromatic alcohol, to produce chloroformates. As to this difference, Fieser I,
Fieser II and Grosse demonstrate that the production of chloroformates by reacting
phosgene with a primary alcohol was well known in the art, including the reaction using an
aromatic alcohol and phosgene as described by Fieser II. Thus, in our view, it would have
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