Appeal No. 2004-0599
Application No. 09/843,554
claim 18 as construed by the examiner. The examiner’s reasoning
regarding “[w]orking backwards” from the final product (Answer,
page 5) is not persuasive since the examiner has not pointed to
any teaching or suggestion in Terhune that the amount of the di-
or tri-alkyl species falls within the amount required by claim 18
on appeal. Similarly, the examiner’s reliance on the various
process conditions to influence the composition are not supported
by any suggestion or motivation from the reference (Answer, page
6). “The mere fact that the prior art could be so modified would
not have made the modification obvious unless the prior art
suggested the desirability of the modification. [Citations
omitted].” In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127
(Fed. Cir. 1984).
For the foregoing reasons, we determine that the examiner
has not met the initial burden of establishing a prima facie case
of obviousness in view of Terhune. Accordingly, we cannot
sustain the examiner’s rejection of claims 18 and 19 under
section 103(a) over Terhune.
5
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007