Ex Parte HIRAI - Page 4




              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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