Appeal No. 1999-1180
Application No. 08/751,557
together with nickel instead of palladium only leads to a
decrease in selectivity as well as conversion rate. (Appeal
brief, page 9.) We note, however, that the examiner's prima
facie case of obviousness does not rest on whether one of
ordinary skill in the art would have been led to use nickel
together with palladium. Rather, the examiner's position is
based on the collective teachings of Moore and Morikawa, which
would have suggested to one of ordinary skill in the art that
the use of Morikawa's catalyst in Moore would have resulted in
improved catalyst life and hydrochloric acid resistance. In any
event, Moore's examples showing the use of a catalyst containing
both Pd and Ni cannot reasonably be extrapolated to other
catalysts within Moore's disclosure, i.e. catalysts that contain
Pd and another metal that is a more active hydrogenation
catalyst. Moore teaches that the use an additional metal which
is a more active hydrogenation catalyst than Pd "acts to purify
the product stream by hydrogenation of the toxic impurity,
chlorofluoromethane, to methane." (Page 2, lines 46-48.) As we
discussed above, the motivation to combine the references need
not be the same as that of the appellants. Kemps, 97 F.3d at
1430, 40 USPQ2d at 1311.
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