Ex parte ANAND et al. - Page 9




          Appeal No. 1998-1219                                                        
          Application 08/419,317                                                      


          suggestions to combine the references.  See Micro Chemical                  
          Inc. v. Great Plains Chemical Co., 103 F.3d 1538, 1546, 41                  
          USPQ2d 1238, 1244-45 (Fed. Cir. 1997)(The motivation to                     
          combine references may come from the references themselves,                 
          the knowledge of those skilled in the art, or the nature of                 
          the problem to be solved).  For example, the examiner has not               
          identified why one of ordinary skill in the art would have                  
          desired PSA “without altering the equilibriums” or have been                
          motivated to make methanol in the process of Keefer, when                   
          combined with Dandekar (Answer, page 4).                                    
               For the foregoing reasons and those set forth in the                   
          Brief, we determine that the examiner has failed to present a               
          prima facie case of obviousness in view of the reference                    
          evidence.  Accordingly, all of the examiner’s rejections under              
          section 103 over the reference evidence of Keefer, Dandekar,                
          JP ‘436, Sauvion, Stönner and Kikuchi are reversed.                         
               C.  Summary                                                            
               The rejection of claims 1-22 under the second paragraph                
          of 35 U.S.C. § 112 is reversed.  The rejection of claims 1-7                
          under 35 U.S.C. § 103 over Keefer is reversed.  The rejection               


                                          9                                           





Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  Next 

Last modified: November 3, 2007