Appeal No. 2005-0138
Application No. 09/618,044
and yields of the isopropanol product disclosed in the examples of
Fukuhara (id.). We disagree.
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. 2002). “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).
“[T]here must be some logical reason apparent from positive,
concrete evidence of record which justifies a combination of
primary and secondary references.” In re Regel, 526 F.2d 1399,
1403 n.6, 188 USPQ 136, 139 n.6 (CCPA 1975).
As correctly argued by appellants, Fukuhara discloses that
“[w]ater is also a useful solvent for the hydrogenation of the
invention.” Col. 1, ll. 57-59 (Brief, page 5; Reply Brief, page
2). Accordingly, on this record the examiner has not met the
initial burden of providing evidence or convincing reasons why one
of ordinary skill in this art would have desired an acetone
reactant with a water content less than or equal to 1.0% by weight
in the hydrogenation reaction disclosed by Fukuhara. The examiner
has not convincingly explained why the high conversion and yield
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