Appeal No. 2000-0344
Application No. 08/718,408
Thus, the cited references will support a prima facie case of obviousness
only if their disclosures would have led a person of ordinary skill in the art to
substitute Neumann’s ruthenium-based catalyst for the chromium-based catalyst
used by Pearson and Muzart. After reviewing the prior art cited by the examiner
and the arguments made by the examiner and Appellants, we agree with
Appellants that the examiner has not shown the claims to be prima facie obvious.
The examiner argues that “[t]he ordinary artisan would have been
motivated to utilize the catalyst of Neumann et al. in the process taught by
Pearson et al. or Muzart because he would have the reasonable expectation that
the chemical process as taught by the prior art will occur with the production of
the desired enone/a,ß-unsaturated ketone.” Examiner’s Answer, page 8.
However, the fact that the chromium-based catalysts of Pearson and Muzart and
the ruthenium-based catalysts of Neumann both catalyze oxidation of alkene
compounds would not necessarily have led those skilled in the art to substitute
one catalyst for the other, unless the prior art provided some reason to do so. In
this case, we agree with Appellants that the prior art teaches away from using
Neumann’s catalyst in Pearson’s or Muzart’s process.
“A reference may be said to teach away when a person of ordinary skill,
upon reading the reference, would be discouraged from following the path set out
in the reference, or would be led in a direction divergent from the path that was
taken by the applicant. The degree of teaching away will of course depend on
the particular facts; in general, a reference will teach away if it suggests that the
line of development flowing from the reference’s disclosure is unlikely to be
5
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007