Ex parte PAGANI et al. - Page 4

          Appeal No. 1997-2353                                       Page 4           
          Application No. 08/405,912                                                  

          carbamate and unreacted ammonia from the reaction mixture                   
          leaving a second reaction space and for recycling of the                    
          carbamate, respectively, to the first reaction space and the                
          ammonia to the second reaction space.  We note that the                     
          examiner is of the opinion that “Pagani does not teach                      
          recycling of carbamate and unreacted ammonia, and separation                
          of urea, carbamate and unreacted ammonia” (answer, page 4).                 
               The examiner does assert, however, that Inoue discloses                
          separating excess ammonia and carbamate in the synthesis of                 
          urea and that “recycling of carbamate and unreacted ammonia is              
          old in the art . . .” of urea synthesis as disclosed by Zardi               
          (answer, page 4).  According to the examiner (answer, page 4),              
                    [i]t would have been prima facie obvious to one                   
               of ordinary skill in the art at the time the                           
               invention was made to modify Pagani, by introducing                    
               a separation step of separating excess of ammonia,                     
               carbamate, as taught by Inou [sic] et al., or                          
               alternatively, recycling unreacted ammonia and                         
               carbamate, as taught by Zardi, because the latter                      
               references expressly teach such modification, with                     
               the reasonable expectation of achieving a successful                   
               process of obtaining high yield of urea, absent                        
               evidence to the contrary.                                              
               Appellants argue that “[i]t is difficult to see where the              
          examiner can find a suggestion of this kind” (brief, page 5).               
          We agree.  While the examiner (answer, pages 5 and 6) refers                
          to various lines of pages 1-3 of Pagani as teaching the use of              

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