Appeal No. 2001-0849 Page 4
Application No. 08/990,120
in the claims and pronounces these limitations as either taught in one of the cited
references
The difference between the instant invention and [Durst] is that applicants
use perborate or percarbonate as the oxidizing reagent. However, [Hackh’s]
teaches percarbonate (decomposes to hydrogen peroxide in aqueous solution)
as oxidizing agent.
or of no patentable significance.
The temperature range of –70 to 800C by [Durst] embrace a temperature range
of 60 to 900C because, there is no significant difference between the upper
limits of 800C and 900C. A pH of about 0.5 to 5.0 or 0.5 to 0.1 is not in and of
itself patentable over the prior arts.
In conclusion, examiner (Examiner’s Answer, p. 5) states that the “invention is
prima facie obvious from the teachings of [Durst], [Shanklin], and [Hackh’s] because
it would have been suggested to one of ordinary skill in the art. The motivation is to
produce a sulfoxide compound by oxidation of the corresponding sulfide
compound.”
The initial burden rests with the examiner to establish a prima facie case of
obviousness of the claimed invention over the prior art. See In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). Here, examiner follows the
steps of applying the standard for determining obviousness but the underlying
analysis lacks the necessary substance for a meaningful review to determine if
examiner has met that initial burden. Examiner’s position is inadequate for two
reasons.
First, examiner appears to have taken a shotgun approach to the claims. In
doing so, all the claims are treated alike without consideration of the differences
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