Appeal No. 2007-0093 Page 6
Application No. 10/924,119
24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
Here, we find that the Examiner has presented sufficient evidence to establish a
prima facie case of obviousness. Le-Khac ‘428, as explained above and on page 3 of
the Answer, clearly discloses all the elements of the claimed method, with the exception
of using a filter press for “the steps of filtering, washing and mechanically removing” as
required by claim 12. As discussed in the Background section above, it appears that
Appellants have admitted that the basic process of preparing the double-metal cyanide
catalyst is in the prior art, albeit not using a filter press. The Examiner relies on Hinney
(column 7, line 31) for its teaching to use filter press to meet the remaining claim
limitation, and articulates a reason why the skilled worker would have been motivated to
have modified Le-Khac ‘428 with Hinney’s teaching. Answer, page 4.
Appellants argue that the Examiner has used hindsight to supply the motivation
or suggestion from Appellants’ specification to combine the references. Brief, page 5.
We do not agree. The Examiner states that “Le-Khac teach[es] that any convenient
means of separating the double metal cyanide catalyst may be utilized” which provides
the motivation to have turned to Hinney’s filter press for isolating and washing the
double metal salt as required by claim 12. Answer, page 4. It would have been logical
for the skilled worker to have combined Le-Khac ‘428 with Hinney because Hinney, as
pointed out by the Examiner, is also concerned with making double metal cyanide salts,
including the same type of salts disclosed in Le-Khac ‘428 and which are claimed. See
Hinney, column 9, Example 1, describing a salt of zinc chloride (compare instant claim
13) and potassium hexacyanocobaltate (compare instant claim 14). Appellants do not
identify a defect in this reasoning. We also that Le-Khac ‘908, which is incorporated by
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