Appeal No. 2001-2272 Page 5
Application No. 08/809,719
argues that Semmelhack discloses the art-recognized equivalence of TEMPO and
4-hydroxy-TEMPO; and that it would been prima facie obvious to substitute 4-hydroxy-
TEMPO for TEMPO in the process of Anelli, per the teachings of Semmelhack. The
examiner further argues that it would have been obvious to use Anelli's process
conditions, modified with 4-hydroxy-TEMPO in lieu of TEMPO, in carrying out the
oxidation of bisnoralcohol to bisnoraldehyde disclosed by Mitsubishi. The examiner
concludes that a person having ordinary skill would have arrived at applicant's claimed
process based on the combined disclosures of Mitsubishi, Anelli, and Semmelhack.
We disagree.
In our judgment, the premise of this rejection is incorrect and, accordingly, the
rejection must fall. More specifically, Anelli does not disclose the use of TEMPO in the
oxidation of primary alcohols to aldehydes. Rather, Anelli's disclosure is restricted to
the use of 4-methoxy-TEMPO, identified in the reference as compound 3b. Where, as
here, the examiner has misapprehended the scope and content of the prior art; where
the teaching attributed to Anelli is not found in Anelli; and where the examiner's reliance
on Anelli is essential to the rejection under 35 U.S.C. § 103(a), we shall not sustain that
rejection.
On this record, we conclude that the examiner has not established a prima facie
case of obviousness of claims 18 through 35. Accordingly, we find it unnecessary to
discuss the Hewitt declaration, filed under the provisions of 37 CFR § 1.132, and relied
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