Appeal No. 2002-2266 Page 4
Application No. 09/366,477
We agree with the Examiner’s findings that Chang describes toluene disproportionation
as required by the first step of claim 1 and suggests that ethylbenzene is an unwanted by-product
(Answer at p. 4). We further agree with the Examiner that Abichandani describes the
ethylbenzene abatement of the second step of claim 1 and further suggests that a toluene
disproportionation product is an appropriate feedstock for the abatement step. Based on the
express suggestions in each reference, the two-stage process would have been obvious to one of
ordinary skill in the art.
Appellants argue that Chang teaches away from the two-stage process of the claim.
According to Appellants, Chang explicitly discourages the use of a separate abatement step as
Chang discloses incorporating a hydrogenation metal in the disproportionation catalyst; a catalyst
component explicitly excluded by claim 1 (Brief at p. 5; Reply Brief at p. 2).
We do not agree that Chang “teaches away.” One of ordinary skill in the art would not be
persuaded, by a reading of Chang, that conducting ethylbenzene abatement in a separate step
according to Abichandani would be unlikely to result in removal of ethylbenzene. See In re
Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1131 (Fed. Cir. 1994)(“In general, a reference will
teach away if it suggests that the line of development flowing from the reference's disclosure is
unlikely to be productive of the result sought by the applicant.”). The two references together, in
fact, provide basis for a reasonable expectation that ethylbenzene will be removed as desired.
Chang describes two embodiments of disproportionation: (1) using a catalyst without the
inclusion of hydrogenation metal (col. 9, l. 62 to col. 13, l. 6) and (2) using a catalyst including
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007