Appeal No. 1996-4087 Page 4
Application No. 08/259,362
U.S.C. § 103 is not well founded. Accordingly, we will not sustain the examiner's
rejection.
“[T]he examiner bears the initial burden, on review of the prior art or on any
other ground, of presenting a prima facie case of unpatentability.” See In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). The examiner
relies upon a combination of Trambouze and Buettgen to reject the claimed subject
matter and establish a prima facie case of obviousness.
The examiner recognizes that there is a deficiency in the process of Trambouze in
that it does not teach a “step for the removal of the heat-sensitive product after it is
produce[d]. ” See Answer, page 3. Nonetheless the examiner concludes that, “[t]he
combination of the removal step of Buettgen et al. with the reaction step of Trambouze
renders the instant process obvious absent evidence of unexpected results.” Id. We
disagree.
On the record before us, the examiner’s conclusion of obviousness is
inappropriate. Appellants’ invention is directed to equilibrium reactions wherein the
more readily volatile products(s) of the reaction are removed following heating the
reaction mixture to a desired reaction temperature, such that the reaction equilibrium is
shifted toward the product side. The requirement for removal of a volatile product is
found in step C of the claimed subject matter which states that, “the reaction mixture is
heated to the desired reaction temperature and .... the more volatile reaction product
or products are removed from the reaction mixture.” Thus, in an esterification
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