Appeal No. 2001-0600
Application No. 08/584,776
“allows higher space-time yields to be achieved when preparing
powder preparations and dyeings.” Appeal brief, page 4, second
paragraph (citing specification, page 2, lines 21-27 (“[t]he $-
modified dye is superior to the "-modified dye”)). Appellant has
discovered that the $ modification of the dye may be obtained by
heating the " modification of the dye (as taught by JP ‘931 and
EP ‘161) in an aqueous phase to temperatures of 70 to 150ºC. See
Specification, page 2, lines 28-30.
Discussion
The initial burden of presenting a prima facie case of
obviousness rests on the examiner. See In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). In order to
establish a prima facie case of obviousness, 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 evidence of a suggestion, teaching, or motivation
to modify a reference may flow from the prior art references
themselves, the knowledge of one of ordinary skill in the art or
from the nature of the problem to be solved. Pro-Mold & Tool Co.
v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d
1626, 1630 (Fed. Cir. 1996). "[A] rejection cannot be predicated
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