Appeal No. 2000-0674
Application 08/867,511
The problem addressed by Reichmann is the presence of the olefins in the recycle stream
resulting from the use of isomerization catalysts without a hydrogenation function, such catalysts
are used to avoid the hydrogenation of aromatics which would reduce the amount of p-xylene
produced (col. 2). Indeed, Reichmann states that
[n]ow it has been found for xylene isomerization using a catalyst unable to
substantially reduce the lower molecular weight olefins produced during
isomerization, that use of a hydrogenation catalyst in the process to convert such
olefins can substantially reduce the xylene loss leading to a greater overall p-xylene
yield, and can also lead to lessen catalyst coking and longer catalyst lifetime. [Col. 3,
ll. 5-12.]
Therefore, on this record, we must conclude that one of ordinary skill in this art would
not have combined LaPierre with Reichmann because LaPierre employs catalysts with a
hydrogenation function and does not teach that the process using such catalysts produces olefins,
and thus would not have the problem that Reichmann addresses. It is well settled that the
examiner must point to some teaching, suggestion or motivation in the prior art to support the
combination of references. See Lee, supra; Smith Industries medical Systems, Inc. v. Vital Signs,
Inc., 183 F.3d 1347, 1356, 51 USPQ2d 1415, 1420-21 (Fed. Cir. 1999); In re Mayne, 1043 F.3d
1339, 1342, 41 USPQ2d 1451, 1454 (Fed. Cir. 1997); ACS Hosp. Sys., Inc. v. Montefiore Hosp.,
732 F.2d 1572, 1577, 221 USPQ 9292, 933 (Fed. Cir. 1984); In re Keller, 642 F.2d 413, 425-26,
208 USPQ 871, 881-82 (CCPA 1981); see also Dow Chem., 837 F.2d at 473, 5 USPQ2d at 1531
(“The consistent criterion for determination of obviousness is whether the prior art would have
suggested to one of ordinary skill in the art that [the claimed process] should be carried out and
would have a reasonable likelihood of success, viewed in light of the prior art. [Citations
omitted] Both the suggestion and the expectation of success must be founded in the prior art, not
in the applicant’s disclosure.”).
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