Appeal No. 2006-2247
Reexamination Nos. 90/006,554 and 90/006,894
1 motivation for the current invention.” In re Fulton, 391 F.3d 1195, 1200, 73
2 USPQ2d 1141, 1145 (Fed. Cir. 2004). Rather, the court has instructed:
3 “[T]he question is whether there is something in the prior art as a
4 whole to suggest the desirability, and thus the obviousness, of making
5 the combination,” not whether there is something in the prior art as a
6 whole to suggest that the combination is the most desirable
7 combination available.
8
9 Id. (quoting In re Beattie, 974 F.2d 1309, 1311, 24 USPQ2d 1040, 1042 (Fed. Cir.
10 1992)).
11 With respect to separately argued claim 5, the appellant urges that Witman
12 never links the amount of catalyst within the range of claim 5 to the water-based
13 process of Witman in which the water content is greater than 25%. (Appeal Brief
14 at 12.) We disagree. Witman’s range of catalyst amounts at column 4, line 69 to
15 column 5, line 3 is generic to all processes described as Witman’s invention.
16
17 Secondary Considerations
18 It is well settled that once a prima facie case of obviousness is established,
19 the burden then shifts to the applicant to rebut. In re Mayne, 104 F.3d at 1342, 41
20 USPQ2d at 1454.
21 The patent owner argues that a problem was solved by “reducing the acid
22 content by utilizing at least 25% water and a catalyst to ensure that superior
23 oxidation results are achieved and high oxidation yields are still achievable...”
29
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