Appeal No. 2001-1932
Application No. 08/829,512
why it would have been obvious to have combined these components
to achieve the claimed invention. See Ecolochem, Inc. v.
Southern California, 227 F.3d 1361; 56 USPQ2d (Fed. Cir. 2000)
(quoting In re Kotzab, 217 F.3d 1365, 1371, 55 USPQ2d 1313, 1317
(Fed. Cir. 2000)) ("[A] rejection cannot be predicated on the
mere identification . . . of individual components of claimed
limitations.") At best, the examiner has established that it
might be “obvious to try” Suto’s process to prepare compounds
such as those disclosed in CA ‘849. See In re Merck & Co., Inc.,
800 F.2d 1091, 1097, 231 USPQ 375, 379 (Fed. Cir. 1986).
Accordingly, we agree with appellants that the examiner has
failed to establish a prima facie case of obviousness and the
rejection is reversed.
2. Rejection of claims 5-9, 11-14 and 19 under 35 U.S.C.
§ 103 as unpatentable over Takeuchi in view of Suto and CA ‘621.
The examiner relies on Takeuchi as disclosing a process for
the carbonylation of N heteroaromatic chlorides including
pyrazines. Examiner’s Answer, page 4. The examiner notes that
Takeuchi differs from the claimed invention in that there are no
substituents on the pyrazine ring. Id., pages 4-5. Suto is
relied on as disclosing “a similar preparation using the a
[sic] pyridine chloride, carbon monoxide, a base and a
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