Ex Parte ICHIKAWA et al - Page 6


         Appeal No. 1999-1180                                                       
         Application No. 08/751,557                                                 


         Thus, we find ourselves in complete agreement with the                     
         examiner's analysis.  (Examiner's answer, pages 3-4.)  From our            
         perspective, one of ordinary skill in the art would have been              
         led to use Morikawa's hydrogenation catalyst based on (i)                  
         palladium and (ii) zirconium, niobium, or tantalum to carry out            
         Moore's process, thus arriving at a method encompassed by                  
         appealed claim 1, in order to improve the life and performance             
         of the hydrogenation catalyst.  As required under 35 U.S.C.                
         § 103, the reasonable expectation of success comes from the                
         collective teachings of the prior art and not the appellants'              
         own disclosure.  Here, Moore would have suggested to one of                
         ordinary skill in the art that any hydrogenation catalyst may be           
         used for the disclosed hydrogenation reaction, and Morikawa                
         would have motivated one of ordinary skill in the art to use a             
         hydrogenation catalyst within the scope of appealed claim 1 to             
         obtain advantages in terms of catalyst life and performance.  As           
         stated by the examiner (examiner's answer, page 5), the                    
         hydrogenation reaction described in Morikawa is so similar to              
         the hydrogenation reaction described in Moore that one of                  
         ordinary skill in the art would have prima facie expected                  
         Morikawa's catalyst to provide the same or substantially the               
         same results when used in Moore's process.                                 


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