Appeal No. 1996-4087 Page 6
Application No. 08/259,362
lines 21 - 26. Accordingly, Buettgen likewise is missing at least one required process
step of the claimed subject matter, step B. Moreover, the examiner has not shown that
a person of ordinary skill in the art seeking to solve the problem of removing a
volatile product from an equilibrium reaction, such as an esterification, would
reasonably be expected or motivated to combine a reference directed to the specific
teaching of a hydrogenation reaction wherein no volatile products are formed or
removed with a second reference directed to an esterification reaction.
The examiner must show reasons that the skilled artisan confronted with the same
problems as the inventor and with no knowledge of the claimed invention would select
the elements from the cited prior art references for a combination in the manner
claimed. We determined that there is no reason, suggestion, or motivation to combine
the references in the manner proposed by the examiner. Accordingly, the examiner has
not established a
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