Appeal No. 2003-0849
Application 09/622,916
claimed subject matter unpatentable under 35 U.S.C. § 103(a). There is no
indication in the cited references that the surfactant used with the methacrylic acid
and water vapor disclosed in Frank would have been expected to be suitable for use
in the process for the rectificative isolation of acrylic or methacrylic acid from an
organic liquid as disclosed in Herbst. The mere fact that the prior art could be
modified as proposed by the Examiner is not sufficient to establish a prima facie
case of obviousness. See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780,
1783 (Fed. Cir. 1992). The Examiner must explain why the prior art would have
suggested to one of ordinary skill in the art the desirability of the modification. See
Fritch, 972 F.2d at 1266, 23 USPQ2d at 1783-84. The Examiner has failed to cite
evidence in the prior art that the suggestion to modify the cited references as
proposed by the Examiner.
The record indicates that the motivation relied upon by the Examiner for
adding a surfactant to the recertification process of Herbst comes from the
Appellants’ description of their invention in the specification rather than coming
from the applied prior art and that, therefore, the Examiner used impermissible
hindsight in rejecting the claims. See W.L. Gore & Associates v. Garlock, Inc., 721
F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983); In re Rothermel, 276
F.2d 393, 396, 125 USPQ 328, 331 (CCPA 1960). Accordingly, we reverse the
-6-
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007