Appeal No. 2001-0971 Page 4
Application No. 08/256,736
-10°C to less than 60°C. The rejection does not provide facts or reasoning of
why or how the prior art references relied upon teach or suggest that limitation.
The examiner relies on Swindell for the proposition that the temperature is not
critical, thus it would have been obvious to perform the reaction at any
temperature. Denis however, teaches that esterification should take place at
temperatures greater than 60°C, and Swindell in fact performs the esterification
at 70°C. Thus, the rejection has not provided any teaching, suggestion, or
motivation that would have led the ordinary artisan to perform the process at
temperatures less than 60°C. See In re Lee, 277 F.3d 1338, 1342, 61 USPQ2d
1430, 1432 (Fed. Cir. 2002) (in reviewing an obviousness rejection, the court
noted that “conclusory statements” as to teaching, suggestion or motivation to
arrive at the claimed invention “do not adequately address the issue.”).
In the answer, the examiner also relies upon an additional reference, cited
in the information disclosure statement, as not mentioning temperature as a key
factor in the process, thus once again concluding that it would have been
obvious to perform the reaction at any temperature. See Examiner’s Answer,
page 5. The absence of a teaching, however, should not be interpreted as a
teaching or suggestion that would motivate one of ordinary skill in the art to
perform the esterification process at a lower temperature than what is taught in
the prior art. Moreover, appellants state that “the esterification of the baccatine
derivative was known to be a difficult reaction even at the temperatures used in
the prior art, so one of ordinary skill in the art would not have had any reason to
expect success even if there were motivation to lower the temperature of the
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