Appeal 2007-0549
Application 10/399,312
“Erckel et al. further teach the interchangeability of suitable aprotic solvents
(such as N,N-dimethylformamide and N-methylpyrrolidone) in a process of
making bis-benzazolyl compounds (column 2, lines 52-55)” (id.).
The Examiner concludes that one of ordinary skill would have been
motivated by Erckel’s disclosure of the interchangeability of aprotic solvents
to substitute Erckel’s N-methylpyrrolidone for the solvents used to prepare
bis-benzazolyl compounds in the remaining references (see id. at 7-8).
The Examiner may establish a prima facie case of obviousness based
on multiple references “only by showing some objective teaching in the
prior art or that knowledge generally available to one of ordinary skill in the
art would lead that individual to combine the relevant teachings of the
references.” In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed.
Cir. 1988).
However, an “[e]xpress suggestion to substitute one equivalent for
another need not be present to render such substitution obvious.” In re Fout,
675 F.2d 297, 301, 213 USPQ 532, 536 (CCPA 1982); see also, In re
Mayne, 104 F.3d 1339, 1340, 41 USPQ2d 1451, 1452 (Fed. Cir. 1997)
(rejection for obviousness affirmed “[b]ecause the applicants merely
substituted one element known in the art for a known equivalent”).
We agree with the Examiner that one of ordinary skill preparing
bis-benzazolyl compounds according to the teachings of Liechti would have
considered the N-methylpyrrolidone disclosed by Erckel to be an equivalent
solvent to Liechti’s dimethyl formamide.
Liechti describes the preparation of bis-benzoxazolyl-stilbene
compounds encompassed by formula (1) of claim 1 (Liechti, col. 1, l. 15,
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