Appeal No. 2005-0138
Application No. 09/618,044
disclosed in the examples of Fukuhara would have necessarily
required a low water content in the acetone reactant, especially in
view of the reactions taught by appellants for the hydrogenation of
acetone (see the specification, page 4).
We also note that the examiner has not established any
motivation for using the specialty reagent-grade acetone as
disclosed by Sigma (Answer, page 7) in the industrial process
taught by Fukuhara (col. 1, ll. 42-60).3
For the foregoing reasons and those stated in the Brief and
Reply Brief, we determine that the examiner has not established a
prima facie case
of obviousness in view of the reference evidence. Therefore we
need not consider the sufficiency of appellants’ evidence of non-
obviousness (Brief, page 3, citing the specification, pages 8-9,
and the Declaration under 37 CFR § 1.132 executed July 4, 2001).
See In re Geiger, 815 F.2d 686, 688,
3
3We also note that neither appellants nor the examiner has
discussed why one of ordinary skill in this art would have
incorporated the vapor phase multiple hydrogenation stage process
of Hiles into the liquid phase (trickle down) hydrogenation
process taught as essential to the Fukuhara process (see the
abstracts of each reference; see also Fukuhara, col. 3, ll. 56-
58).
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