Appeal No. 1997-2797
Application 08/199,286
unsaturated compounds from the reaction of the
halogenated phosphorane with an aldehyde or ketone.
March teaches the reaction of an aldehyde or ketone
with a phosphorane to form olefinically unsaturated
compounds. One of skill in the art would be
motivated to apply the teaching of March to form
olefinically unsaturated compounds in the manner
described by applicants. Further, the mere used
[sic, use] of a different starting material, whether
novel or known, in a conventional process to produce
the produce that one would expect therefrom, does
not render the process unobvious. In re Surrey et
al. (CCPA 1963) 319 F.2d 233, 183 USPQ 67; In re
Kanter (CCPA 1963) 399 F.2d 249, 158 USPQ 331.
The examiner's above quoted rationale is clearly
deficient for reasons fully detailed in the cases of In re
Ochiai, 71 F.3d 1565, 1569-1572, 37 USPQ2d 1127, 1131-1133
(Fed. Cir. 1995) and In re Brouwer, 77 F.3d 422, 425, 37
USPQ2d 1663, 1666 (Fed. Cir. 1995). It follows that we also
cannot sustain the examiner's
§ 103 rejection of claims 5 and 6 as being unpatentable over
March.
SUMMARY
The decision of the examiner is reversed.
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