Appeal No. 2001-1932
Application No. 08/829,512
processes when specific starting materials are used in
combination with a narrow band of catalysts. See Appeal Brief,
Paper No. 20, received May 10, 1999, page 19.
Discussion
The initial burden of presenting a prima facie case of
obviousness rests on the examiner. In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). In determining
whether an invention is obvious, the examiner must consider:
(1) the scope and content of the prior art; (2) the differences
between the prior art and the claimed invention; (3) the level of
ordinary skill in the art; and (4) any objective considerations
that may present. Graham v. John Deere Co., 383 U.S. 1, 17-18,
148 USPQ 459, 466-467 (1966). “Where an obviousness
determination is based upon a combination of prior art
references, there must be some teaching, suggestion or incentive
supporting the combination.” In re Geiger, 815 F.2d 686, 688,
2 USPQ2d 1276, 1278 (Fed. Cir. 1987).
1. Rejection of claims 2-4, 10, 13-17 and 19 as
unpatentable over Suto in view of CA ‘849.
The examiner relies on Suto as disclosing a method for
preparing arylamides by reaction of an aromatic chloride in the
presence of carbon monoxide, an amine and a base. Examiner’s
3
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