Ex Parte Fischer et al - Page 5


                Appeal No.  2007-0623                                                    Page 5                 
                Application No.  10/380,591                                                                     
                       Therefore, the issue presented to this panel distills down to whether a                  
                person of ordinary skill in the art would have been motivated to react a                        
                compound of formula V with a compound of formula IX to produce a compound                       
                of formula I.  In our opinion, the preponderance of evidence4 on this record                    
                provides the motivation to perform this reaction and the rejection of claim 1 is                
                affirmed.                                                                                       
                       “In rejecting claims under 35 U.S.C. § 103, the [E]xaminer bears the initial             
                burden of presenting a prima facie case of obviousness.  Only if that burden is                 
                met, does the burden of coming forward with evidence or argument shift to the                   
                applicant.”  In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.                
                1993), citation omitted.  “The test for obviousness is not express suggestion of                
                the claimed invention in any or all of the references but rather what the                       
                references taken collectively would suggest to those of ordinary skill in the art               
                presumed to be familiar with them.”  In re Rosselet, 347 F.2d 847, 851,                         
                146 USPQ 183, 186 (CCPA 1965).                                                                  
                       Prima facie obviousness based on a combination of references requires                    
                that the prior art provide “a reason, suggestion, or motivation to lead an inventor             
                to combine those references.”  Pro-Mold and Tool Co. v. Great Lakes Plastics                    
                Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996).                                
                       [E]vidence of a suggestion, teaching, or motivation to combine may                       
                       flow from the prior art references themselves, the knowledge of one                      
                       of ordinary skill in the art, or, in some cases, from the nature of the                  
                       problem to be solved. . . .  The range of sources available, however,                    

                                                                                                                
                4 Patentability is determined based on a preponderance of the evidence.  See In re Oetiker, 977 
                F.2d 1443, 1446, 24 USPQ2d 1443,1445 (Fed. Cir. 1992) (“[T]he conclusion of obviousness vel     
                non is based on the preponderance of evidence and argument in the record.”).                    




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