Appeal No. 2001-0934 Page 4
Application No. 09/294,483
To make up for this deficiency, the examiner relies (id.) on March to teach
that the replacement of a halogen with an alkylthio group or arylthio group was
well within the skill of the art at the time the invention was made. In addition, the
examiner relies on Pfenninger to teach (id.), “aklylthio- and/or arylthio-substituted
diketo-diaryl-pyrrolopyrroles are of some interest in the dye art.”
Based on this evidence the examiner finds (Answer, page 5), “one skilled
in the art would have been motivated to utilize the process as suggested by Iqbal
et al., especially in view of the teachings in March and Pfenninger et al., to arrive
at the instant claimed process with the expectation of producing an alkylthio-
and/or arylthio-substituted diketo-diaryl-pyrrolopyrrole.”
Initially, we note as set forth in Ecolochem Inc. v. Southern California
Edison, 227, F.3d 1361, 1375, 56 USPQ2d 1065, 1075-76 (CAFC 2000) the:
“[S]uggestion to combine may be found in explicit or implicit
teachings within the references themselves, from the ordinary
knowledge of those skilled in the art, or from the nature of the
problem to be solved.” … However, there still must be evidence
that “a skilled artisan, confronted with the same problems as the
inventor and with no knowledge of the claimed invention, would
select the elements from the cited prior art references for
combination in the manner claimed.” … “[A] rejection cannot be
predicated on the mere identification … of individual components of
claimed limitations. Rather particular findings must be made as to
the reason the skilled artisan, with no knowledge of the claimed
invention, would have selected these components for combination
in the manner claimed.”…. [Citations omitted].
In this regard, we agree with appellants (Brief, page 7) that contrary to the
examiner’s position1 “[t]he mere fact that a reaction scheme is known does not
1 According to the examiner (Answer, bridging paragraph, pages 4-5), “[o]nce the general reaction
has been shown to be old, the burden is on [a]ppellants to present reasons or authority for
believing that a group on the starting material would take part in or affect the basic reaction and
thus alter the nature of the product or the operability of the process.”
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