Appeal No. 2001-1932
Application No. 08/829,512
substituted the referenced process with the process of Takeuchi
or Suto.
Accordingly, the examiner has failed to establish a prima
facie case of obviousness and the rejection is reversed.
3. Rejection of claim 18 under 35 U.S.C. § 103 as
unpatentable over CA ‘894 in view of Suto.
In rejecting claim 18, the examiner relies on essentially
the same reasoning used in conjunction with the first ground of
rejection. See Examiner’s Answer, pages 5-6. In particular, the
examiner maintains that “[i]t would have been obvious to one
ordinarily skilled in the art to have used the process [sic] CA
‘894 to have prepared the phenoxy substituted compound and to
have continued with a Suto carbonylation to have made the
analogous Suto amide herbicide.” Id., page 6.
The examiner does not reference any teachings in the prior
art which support this conclusion of obviousness. Rather, the
examiner merely states that “[t]he references are combinable
since they are both from the same field of endeavor (i.e.,
producing herbicides).” Id. Reliance on “common knowledge and
common sense” do not fulfill the requirement to provide reasons
in support in findings of obviousness. In re Thrift 298 F.3d
1357, 1364, 63 USPQ2d 2002, 2006 (Fed. Cir. 2002) (quoting
In re Lee, 277 F.3d 1338, 1344-45, 61 USPQ2d 1430, 1435
8
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