Appeal No. 2001-0597
Application 08/564,513
effectiveness of catalyst precursor compositions comprising zero
valent nickel in connection with hydrocyanation reactions (but
not hydroformylation reactions) involving activated olefins,
while appellants’ catalyst precursor compositions are useful in
the hydrocyanation of unactivated monoolefins. See id.
In order to establish a prima facie case of obvious-
ness, the examiner must identify a suggestion or motivation to
modify the teachings of the cited references to achieve the
claimed invention. In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d
1313, 1316-17 (Fed. Cir. 2000). The suggestion or motivation to
modify a reference may be implicit from the prior art as a whole
rather than expressly stated. Id. However, regardless of
whether the examiner relies on an express or implicit showing, he
must provide reasons for finding a limitation to be taught or
suggested in the reference. Id. “[P]articular findings must be
made as to the reason the skilled artisan, with no knowledge of
the claimed invention, would have selected the[] components for
combination in the manner claimed.” Id., 217 F.3d at 1371, 55
USPQ2d at 1317.
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