Appeal No. 2001-1440
Application 08/931,635
Hermann, however, adds the water for the purpose of
increasing the rate of the reaction which takes place in the
organic solvent (col. 2, lines 40-44). The examiner has not
explained, and it is not apparent, how the disclosure of using
water for this purpose would have led one of ordinary skill in
the art to react the lithium sulfate and sodium chloride or
potassium chloride in an aqueous solution and to add an organic
solvent to the aqueous solution. Consequently, the examiner has
not carried the burden of establishing a prima facie case of
obviousness of the method recited in the appellant’s
claims 1, 3-6 and 8-26. Accordingly, we reverse the rejection
these claims.
Rejection of claim 7
Claim 7 requires that lithium nitrate or lithium bromide is
made in an aqueous, semiaqueous or organic solution.
The examiner argues that one of ordinary skill in the art
would have expected lithium nitrate and lithium bromide to react
similarly to Hermann’s lithium chloride (answer, page 4). This
is mere speculation, and such speculation is not a sufficient
basis for a prima facie case of obviousness. See In re Warner,
379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied,
389 U.S. 1057 (1968); In re Sporck, 301 F.2d 686, 690, 133 USPQ
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