Appeal No. 2006-2247
Reexamination Nos. 90/006,554 and 90/006,894
1 Here, Witman does not say that an aqueous medium leads to an inoperable
2 process. Quite the contrary, Witman teaches that the N-oxide product is
3 “somewhat unstable” and therefore the distillation of the water or water and
4 solvent during product recovery must be performed at “low pressure that the N-
5 oxide product is not decomposed.” (Column 7, lines 39-52.) Alternatively,
6 Witman teaches that “the N-oxide is best recovered by first converting it to the
7 hydrohalide [which is more stable than the N-oxide], then removing water or water
8 and solvent.” (Column 7, lines 43-48.) Thus, Witman expressly discloses
9 solutions to the instability problem, which is to perform low pressure distillation or
10 first convert the N-oxide to hydrohalide. As we discussed above, the appealed
11 claims do not preclude the recovery of N-oxide by first converting the product to
12 the hydrochloride. The disclosure in Witman is hardly the type of teaching that
13 can reasonably be considered to “teach away.”
14 To the extent that the prior art suggests that an aqueous reaction medium is
15 inferior to a non-aqueous reaction medium, the patent owner has not satisfactorily
16 established any discovery beyond what was known to the art. Contrary to what the
17 patent owner would have us believe, our reviewing court has explained that the
18 “case law does not require that a particular combination must be the preferred, or
19 the most desirable, combination described in the prior art in order to provide the
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