Appeal No. 2005-1140
Application 10/247,069
corresponds to the examiner’s findings at Pazos ‘571, page 20, second paragraph, and the
paragraph bridging pages 22-23. Thus, on this record, the term “cook out” is not synonymous
with the term “stripping” in the context of Pazos ‘571, and there is no disclosure in the reference
which teaches away from the clear teachings of this reference because Pazos ‘571 does not
criticize, discredit or otherwise discourage following any teachings therein. See In re Fulton,
391 F.3d 1195, 1201, 73 USPQ2d 1141, 1145-46 (Fed. Cir. 2004). Accordingly, we find that
one of ordinary skill in this art routinely following the clear teachings of Pazos ‘571 would have
arrived at the claimed invention without recourse to appellants’ specification and claims. See
B.F. Goodrich Co. v. Aircraft Braking Sys. Corp., 72 F.3d 1577, 1582, 37 USPQ2d 1314, 1318
(Fed. Cir. 1996) (“When obviousness is based on a particular prior art reference, there must be a
showing of a suggestion or motivation to modify the teachings of that reference. [Citation
omitted.] This suggestion or motivation need not be expressly stated. [Citation omitted.]”).
Considering now claims 2 and 4, we agree with appellants’ that Pazos ‘571 does not
disclose the specified ranges for the amount of alkylene oxide remaining in the product from the
mixing reactor introduced into the pipe reactor specified in claim 2 or for the amount of
residence time in the pipe reactor specified in claim 4 (brief, page 2). However, as the examiner
points out (answer, pages 4 and 7), one of ordinary skill in this art routinely following the
teachings of Pazos ‘571 would have arrived at a working or optimum range for each of these
variables by routine experimentation. See In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219
(CCPA 1980) (“[D]iscovery of an optimum value of a result effective variable in a known
process is ordinarily within the skill of the art. [Citations omitted.]”); In re Aller, 220 F.2d 454,
456-58, 105 USPQ 233, 235-37 (CCPA 1955) (“[W]here general conditions of a claim are
disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by
routine experimentation.”). Appellants’ argument that Pazos ‘571 does not teach a CSTR as
required by claim 5 (brief, page 3) overlooks the fact that the disclosure from this reference
relied on by the examiner involves FIG. 2 in which the first reactor is continuous reactor 21 that
can be a CSTR (page 22, ll. 9-12).
Appellants’ arguments with respect to claims 6 and 7 (brief, pages 3-4) do not point out
any specific error in the examiner’s reliance on the combined teachings of the respective
combinations of references, and therefore are entitled to no weight.
- 4 -
Page: Previous 1 2 3 4 5 6 Next
Last modified: November 3, 2007