Appeal No. 2002-2266 Page 6
Application No. 09/366,477
While the “teach away” test is a useful general rule, care must be taken not to adopt it in
the abstract. Gurley, 27 F.3d at 553, 31 USPQ2d at 1132. “Although a reference that teaches
away is a significant factor to be considered in determining unobviousness, the nature of the
teaching is highly relevant, and must be weighed in substance”. Id. Upon weighing the
teachings of Chang in substance, it is apparent that Chang does not “teach away” from the two-
step process of claim 1.
Appellants argue that the Examiner has not shown any motivation or suggestion for
combining the references (Brief at 8; Reply Brief at 2-3). We do not agree. The Examiner
specifically pointed out that the suggestion is contained in aspects of both references (Answer at
p. 4). In fact, Abichandani provides a road map for performing the two-stage operation in that
this reference suggests performing the ethylbenzene selective conversion on a feedstream
obtained from a toluene disproportionation reaction. Abichandani does not disclose the specifics
of disproportionation and, therefore, one of ordinary skill in the art would have looked to known
processes such as that described by Chang. This is a sufficient basis to support a conclusion of
obviousness. See In re Sastry, 285 F.3d 1378, 1383, 62 USPQ2d 1436, 1439 (Fed. Cir. 2002).
Appellants argue that if one of ordinary skill in the art followed the teachings of the two
references, one would arrive at a two-stage process in which the toluene disproportionation
catalyst contains hydrogenation metal to remove ethylbenzene, as taught by Chang, and there is
an additional downstream removal step, as taught by Abichandani (Brief at p. 7). Appellants are
ignoring the fact that Chang describes two embodiments: one in which the catalyst is not
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