Appeal No. 1996-2340
Application 08/108,854
been obvious to one of ordinary skill in this art to perform any of the reactions described in
the applied prior art in the presence of active carbon in order to obtain a more highly
purified chloroformate product.
As to the appellants’ argument that the prior art only recognizes the use of active
carbon as a purifying agent and not as a catalyst, we point out that to establish
obviousness, the examiner’s reason for combining or applying references does not have to
be identical to that of the appellants. In re Kemps, 40 USPQ2d 1309, 1311 (Fed. Cir.
1994); In re Wiseman, 596 F.2d 1098, 1022, 201 USPQ 658, 661 (CCPA 1979).
Accordingly, there is no burden on the examiner to establish that active carbon acts as a
catalyst in the reaction of a primary alcohol and phosgene to produce a chloroformate.
The examiner need only provide a reason, based on the prior art or knowledge generally
available in the art, as to why it would have been obvious to one of ordinary skill in the art to
arrive at the claimed invention. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 297, n24, 227 USPQ 657, 667, n24 (Fed. Cir. 1985). Here, we find that the
examiner has met that burden by explaining that it would have been obvious to those of
ordinary skill in the art to employ active carbon as a purifying reagent in the claimed
method. Answer, p. 7.
II.
Turning to Group II, we do not find any explanation by the examiner as to why the
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