Appeal No 2007-0310
Application No 10/260,498
Appellants argue that Herold teaches the “removal of the catalyst
residue and treating agent by acid precipitation and filtration” whereas “the
instant claims specifically recite[] that no precipitate is formed by the
addition of acid.” (Br. 6.) In addition, Appellants argue that “the Examiner
has failed to point to any teaching of Nagata et al. regarding whether
precipitates are formed in their invention by the addition of acid,” that
“Doerge fails to supply the missing teaching to rectify the deficiencies of
Herold,” and that “Doerge is not properly combinable with Herold et al. and
Nagata et al. as Doerge does not teach precipitation of the acid, whereas
Herold et al. do and Nagata et al. is silent.” (Id.)
We are not persuaded by these arguments. First, the Examiner does
not rely on Herold for teaching that no precipitate is formed. Second, for the
reasons discussed above, we agree with the Examiner that Doerge and Nagata
each teach that “no precipitate is formed by reaction of the acid with the basic
catalyst,” as recited in claim 10. Third, we agree with the Examiner that one
of ordinary skill in the art would have been motivated to combine the
references in order to avoid the need to remove precipitated salt.
We conclude that the Examiner has set forth a prima facie case that
claim 10 would have been obvious over Herold in view of Nagata or
Doerge, which Appellants have not rebutted. We therefore affirm the
rejection of claim 10 under 35 U.S.C. § 103. Claims 11-13 and 67-72 fall
with claim 10.
4. OBVIOUSNESS REJECTION OF CLAIMS 25-28 and 73-78
Claims 25-28 and 73-78 stand rejected under 35 U.S.C. § 103 as
obvious over Pazos in view of Doerge and Nagata. The Examiner argues
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