Appeal No. 2000-0344
Application No. 08/718,408
productive of the result sought by the applicant.” In re Gurley, 27 F.3d 551, 553,
31 USPQ2d 1130, 1131 (Fed. Cir. 1994).
Here, Neumann teaches oxidative reactions of various substrates with
various oxidants, catalyzed by a ruthenium-based catalyst. Most relevant to the
reaction of the instant claims is the oxidation of cyclohexene with t-butyl
hydroperoxide, to yield the “en-2-one” product. See Table 1. Neumann’s data
show that this reaction proceeds with 28.7% yield, with an almost equal
percentage (25.2%) of unidentified “other” products. Neumann concluded that
the catalytic system was “highly active” in the presence of t-butyl hydroperoxide,
but that “selectivity is marred by various nonselective radical reactions leading to
a large diversity of unidentified products.” Page 6027, left-hand column.
By contrast, Pearson and Muzart teach processes similar to that of the
instant claims, but performed with chromium-based catalysts. Muzart teaches
that ? -5 unsaturated steroids were converted to the corresponding ? -5-7-one
compound with yields between 40% and 61%. See the Table on page 4667
(runs 1-7). Muzart characterizes these yields as “fair” (abstract). Pearson
teaches that “the chromium carbonyl-catalysed reaction with the steroidal
compounds resulted in very high yields of the 7-oxo derivatives,” specifically 80%
and 100% yields. Page 268 (Figure and sentence bridging the columns).
Thus, the examiner’s prima facie case depends on whether a person of
ordinary skill in the art would have been led to replace a chromium-based
catalyst that produced yields of between 40% and 100% of the desired product,
with a ruthenium -based catalyst that produced the desired product with a yield of
6
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007