Appeal No. 2004-0495 Paper 22
Application No. 09/503,599 Page 7
B. The legal standard
For a prima facie case of obviousness to be established, the teachings of the
prior art itself must appear to have suggested the claimed subject matter to one of
ordinary skill in the art. See In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147
(CCPA 1976). 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. Id., 972 F.2d at 1266, 23 USPQ2d at 1783-84.
C. Analysis
According to the examiner, (i) Kurian suggests that neither starting reactant
needs to be preheated, whereas Armstrong suggests that the reactants can be
preheated (Answer, p. 5, ¶ 1); (ii) preheating starting materials is known in the art to
minimize processing time (id., p. 4, ¶ 4); and, (iii) feeding reactants into different levels
of a chemical reactor is a routine variable used to control residence time and generation
of volatile byproducts in the reactor (id., p. 5, ¶ 3). Further according to the examiner,
appellants have not shown any unexpected results due to preheating the starting
materials or feeding reactants into the transesterification vessel at different levels (id.,
pp. 4-6).
First, as pointed out by appellants (Brief, p. 7, last ¶), Armstrong only preheats
one starting material, the dimethyl terephthalate, before mixing. Armstrong discloses
adding hot glycol to the bubble cap column, if needed to maintain the
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007