Appeal No. 2001-0597
Application 08/564,513
The examiner relies on Billig for a teaching of
catalyst compositions comprising nickel and
substituted/unsubstituted bidentate phosphite ligands which are
structurally similar to the claimed ligands. Examiner’s Answer,
page 4. Billig discloses bidentate phosphite ligands which are
both symmetrical and unsymmetrical (id., page 6) for use in
hydroformylation processes (Billig, column 1, lines 7-11).
According to the examiner,
[t]he difference between the catalyst
compositions of the prior art and the
catalyst compositions instantly claimed
is that of generic description. The
indiscriminate selection of “some” among
“many” is prima facie obvious. The
motivation to make the claimed catalyst
precursor compositions derives from the
expectation that structurally similar
compositions would possess similar activity
(ie., as a catalyst precursor composition).
Examiner’s Answer, pages 4-5.
The examiner appears to acknowledge that Billig does
not specifically teach a catalyst composition comprising a zero
valent nickel. However, the examiner maintains that one of
ordinary skill in the art would have been motivated to prepare
Billig’s catalyst precursor compositions using zero-valent nickel
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