Appeal 2007-0736
Application 10/480,239
The Examiner concludes: “It would have been obvious to utilize the
silicon dioxide-supported ruthenium catalysts of Shokal and Schuster
considered with Shokal prepared via the procedure of Setoyama” (Answer
5).
Appellants contend the Examiner has failed to explain why one of
ordinary skill in the art would have been motivated to select and combine the
three references and, in that regard, has not made the required Graham
findings regarding the scope and content of the prior art and the level of skill
in the art (Appeal Br. 3). Appellants further contend the Examiner “erred by
dismissing the unexpected results . . . demonstrated by Appellants,”
evidencing “the criticality of the claimed supported ruthenium catalyst.”
(Appeal Br. 4-5 (citing Example 1 and the Comparative Example (Spec. 12-
15).) Finally, according to Appellants, both Shokal and Setoyama “teach
away from” their claimed invention, based on a comparison of Shokal’s
Examples IV and VIII and on Setoyama’s use of “a halogen containing
ruthenium precursor.” (Appeal Br. 5-9; Reply Br. 4-7.)
Appellants conclude: “The overall disclosures, teachings, and
suggestions of the cited art, and the level of skill in the art – i.e., the
understandings and knowledge of persons having ordinary skill in the art . . .
fail to support the legal conclusion of obviousness.” (Appeal Br. 10.)
In view of these conflicting positions, we frame the § 103(a) issues:
Would the skilled artisan have been motivated to combine the
teachings of the cited references in such a way as to render the subject
matter of claim 1 obvious, as found by the Examiner, or do the references
teach away from such a combination, as Appellants contend?
4
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