Appeal No. 2005-0183
Application No. 09/206,218
The initial burden of establishing a prima facie case of
obviousness rests with the examiner. See In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). Whether
employing a single reference or a combination of references to
establish prima facie obviousness, the examiner must show
evidence that any proposed modification would have been desirable
to those of ordinary skill in the art. See B.F. Goodrich Co. v.
Aircraft Braking Sys. Corp., 72 F.3d 1577, 1582, 37 USPQ2d 1314,
1318 (Fed. Cir. 1996); 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.”
See In re Regel, 526 F.2d 1399, 1403 n.6, 188 USPQ 136, 139 n.5
(CCPA 1975).
As correctly argued by appellants (Brief, page 10; Reply
Brief, page 4), the examiner has not presented any convincing
reasoning, suggestion or motivation as to why one of ordinary
skill in this art would have modified the process of EP ‘060,
where the catalyst already possess silicon:aluminum atomic ratios
of greater than 175, with the catalyst pretreatment of Eberly,
where Eberly teaches that silica:alumina mole ratios of up to 29
(i.e., atomic ratios of up to 14.5) provide sufficiently
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