Appeal No. 2000-2177 4
Application No. 08/912,229
single reference to reject the claimed subject matter and establish a prima facie case of
obviousness. It is the examiner’s position that, “Ishii et al. teach a process for separating an
oxidation reaction product and an oxidation catalyst from a reaction mixture obtained by
oxidation of a substrate in the presence of an imide compound {see pages 34-37 and
page 1 of the instant specification}.” See Answer page 3. Furthermore, it is the
examiner’s position that solvents such as alcohol are known to have water present.
Accordingly, water is present in the reaction of Ishii. See Answer, page 4. We disagree.
Although it is well known that alcohol is miscible with water, the miscibility does not
make it an aqueous solvent as required by the claimed subject matter. The examiner has
otherwise found no suggestions that water may be present in the reaction phase of Ishii’s
process. Indeed, we find that the solvents disclosed in the paragraph bridging pages 34-35
of Ishii fail to suggest or disclose the presence of water. Furthermore, there is no express
discussion of separating the oxidation catalyst from an oxidation reaction product except as
to a single statement on page 1 of the specification that separation is commonly by
distillation. However, that process is not the process of the claimed subject matter.
Based upon the above analysis, we have determined that the examiner's legal
conclusion of obviousness is not supported by the facts. "Where the legal conclusion [of
obviousness] is not supported by [the] facts[,] it cannot stand." In re Warner, 379 F.2d
1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057
(1968), reh’g denied, 390 U.S. 1000 (1968).
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