Appeal No. 2007-0623 Page 6
Application No. 10/380,591
does not diminish the requirement for actual evidence. That is, the
showing must be clear and particular.
In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999)
(citations omitted).
As the Examiner explains, Hartman teaches “that the substitution of
halogen by azide is affected by the substituent bonded to the aryl part (Ar) of [the
arylazonaphthalene compound] and that electron donors make the reaction more
difficult.” Nevertheless, the Examiner finds Table 1 on page 3 of Hartmann
demonstrates that “although the reaction time is longer, a product (e.g.,
compound 13g[ ]5) in which the Ar is substituted with an electron donor group
(e.g., 4-OCH3) can be prepared by the process” of reacting an arylazobenzene
with an azide compound. Answer, page 9. Specifically, the Examiner finds
Hartmann “did prepare benzo-1,2,3-triazole compounds even though an electron
donor group was present.” Id. Therefore, Appellants’ unsupported assertions
notwithstanding, the Examiner finds that Hartman provides the motivation to use
arylazonaphthalene compounds (as taught by Vorozhtzov) wherein the Ar part of
the molecule is substituted with other electron donor groups such as hydroxyl.
Answer, page 10. See also Final Rejection, pages 5-6. In our opinion, the
Examiner has met her burden of providing the evidence necessary to establish a
prima facie case of obviousness. Therefore, the evidentiary burden was properly
shifted to Appellants. Appellants, however, failed to satisfy their burden. We find
no evidence of record to suggest that a person of ordinary skill in the art at the
time the invention was made would not have been motivated to combine the
5 See Hartmann, page 3, Table 1.
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