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. 6Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 NextLast modified: November 3, 2007