Appeal No. 2004-0599
Application No. 09/843,554
The examiner finds that the isomerized product of Example 1
in Terhune differs from the claimed composition “only in the
amount of 2,6-dialkyl phenol and trialkyl phenol present”
(Answer, page 3, footnote omitted). The examiner finds that the
reference suggests isopropylphenol compositions falling within
the scope of the claims, citing col. 3, ll. 11-20, of Terhune
(id.). From these findings, the examiner concludes that it would
have been obvious to one of ordinary skill in the art that a
variety of compositions are “within the purview of the teaching
of the prior art” and “would be suitable for the prior art use”
(id.).
It is well settled that the initial burden of establishing a
case of prima facie obviousness rests with the examiner. See In
re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). In appropriate circumstances, a single prior art
reference can render a claim obvious, although the examiner must
still show a suggestion or motivation to modify the teachings of
that reference. See B.F. Goodrich Co. v. Aircraft Braking Sys.
Corp., 72 F.3d 1577, 1582, 37 USPQ2d 1314, 1318 (Fed. Cir. 1996);
In re O’Farrell, 853 F.2d 894, 902, 7 USPQ2d 1673, 1680 (Fed.
Cir. 1988). On this record, we determine that the examiner has
admitted that the amount of 2,6-dialkyl phenol disclosed by
3
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007