Appeal No. 2003-0804
Application No. 09/196,266
the art had desired to achieve the reaction equilibrium in the
first vessel and the vapor-liquid equilibrium in the second
vessel so as to prevent the formation of dimers and oligomers of
the organic acids during the production of esters, it would have
been obvious for the skillful artisan in the art to have applied
the known chemical principle to the Ridland et al’s process
involved in the two reactors” (sentence bridging pages 8 and 9 of
the answer). Manifestly, what the skilled artisan could have
done if he so desired is not the proper inquiry for determining
obviousness within the meaning of § 103. Certainly, appellant’s
specification is evidence of what one of ordinary skill in the
art could do if so inclined. However, the mere fact that the
prior art could be so modified does not support a conclusion of
obviousness unless the prior art suggested the desirability of
the modification. In re Gordon, 733 F.2d 900, 902, 221 USPQ
1125, 1127 (Fed. Cir. 1984) and cases cited therein. Hence, in
the absence of any teaching or suggestion in the prior art for
operating the process of Ridland in accordance with the presently
claimed steps, we are constrained to reverse the examiner’s § 103
rejection.
The examiner’s reliance on Datta as a “secondary” reference
does not remedy the deficiencies of Ridland outlined above.
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