Appeal No. 2001-2300
Application No. 09/152,595
(Fed. Cir. 1992). We also note that obviousness can be
established by combining or modifying the teachings of the prior
art to produce the claimed invention where there is some
teaching, suggesting, or motivation to do so found either in the
reference or in the knowledge generally available to one of
ordinary skill in the art. In re Fine, 837 F.2d 1071, 1074, 5
USPQ2d 1596, 1598 (Fed. Cir. 1988). Here, the examiner has not
shown such a teaching, suggestion, motivation or explanation.
As mentioned above, the examiner simply states that “[t]he
motivation to use the instantly claimed starting material in the
prior art process is derived from the fact that it is a known
compound and there would have been a reasonable expectation of
obtaining the corresponding known useful product”. (answer, page
3). Because of this lack of teaching, suggestion, motivation or
explanation, we determine that the examiner has not established
a prima facie case of obviousness. See In re Ochiai, 71 F.3d
1565, 1570, 37 USPQ 1127 (Fed. Cir. 1995); In re Brouwer, 77
F.3d 422, 424, 37 USPQ2d 1663 (Fed. Cir. 1996).
Because we have determined that the examiner has not set
forth a prima facie case obviousness, we do not need to reach
the issue of whether or not the showing of unexpected results
discussed in appellants’ appeal brief and reply brief is
sufficient. In re Geiger, 815 F.2d 686, 688, 2 USPQ2d 1276,
1278 (Fed. Cir. 1987).
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