Appeal No. 2006-1273
Application No. 10/420,400
1) The originally claimed invention in the ‘400 Application included a molar ratio
of phenol to tetraphenylphosphonium halide of >10 (see claim 1, page 20), with the
specification teaching that a molar ratio of 10:1 to 13:1 is “preferable.” (Page 4, lines 11-
13.) The claims were amended, apparently to avoid the express disclosure of the 10:1
ratio in König et al. (Compare claim 1 as originally filed with pending claim 1,
reproduced above.) Thus, the presently claimed ratio range 11.1 to 15 is not expressly
disclosed in König et al.
2) König et al. teach optionally adding the slightly soluble alcohol to the reaction
mixture. The claimed invention adds the alcohol at the completion of the reaction. Thus,
the timing of the addition of the alcohol is not expressly disclosed in König et al. (See
Examiner’s Ans., page 4.)
A Skilled Artisan Would Have Been Motivated to Make the 2 Modifications
In view of the claimed invention as a whole, one of ordinary skill in the relevant
art, with the König et al. reference before him, would have been motivated to make the
two modifications relied upon by Appellants. Thus, the claimed invention would have
been prima facie obvious in view of König et al. Appellants offer no evidence of
unexpected (or even superior) results to overcome the Examiner’s prima facie case, and
point to no such evidence in the ‘400 Application.
With respect to the difference in the molar ratio of phenol to tetraphosphonim
halide, Appellants have merely claimed a workable ratio to use when desiring a liquid
product. One of ordinary skill in the art would recognize that using more phenol, i.e., a
ratio of 10:1 (as originally claimed) or a slightly higher ratio (as now claimed) would
yield such a product. Konig et al. expressly provide such a teaching in that their Example
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