Appeal 2007-0736
Application 10/480,239
hydrogenate aromatic rings. (FF 15.) See In re Kahn, 441 F.3d 977, 987, 78
USPQ2d 1329, 1336 (Fed. Cir. 2006) (“test for an implicit showing” of
motivation to combine “is what the combined teachings, knowledge of one
of ordinary skill in the art, and the nature of the problem to be solved as a
whole would have suggested to those of ordinary skill in the art”).
With respect to Appellants’ contention the Examiner failed to make
the Graham findings regarding scope and content of the prior art and level of
skill in the art, these findings can be inferred from the art cited by the
Examiner. See Ex parte Jud, 2006 WL 4080053 at *9 (BPAI) (rehearing
with expanded panel) (“By outlining what one would know from the cited
references, the Examiner met her burden to establish the skill level in the
way it is typically met during examination.”). We note Appellants have not
pointed to any evidence that would have supported any contrary, material
findings relating to the Graham factors.
Further, Shokal and Setoyama do not “teach away from” such a
combination. To the extent any comparison can be made, Shokal’s
Examples IV and VIII are less comparable than Examples VI and VIII,
examples that suggest ruthenium is more selective than rhodium (see FFs 8-
9). Further, Shokal suggests that rhodium and ruthenium are equally useful
for their invention and claims both metals. (See Shokal passim; claim 1.)
And, with respect to Setoyama’s use of a halogen-containing ruthenium
precursor, Appellants’ claim 1 does not exclude such precursors. (FF 3.)
Appellants argue the Examiner’s prima facie case has been rebutted
by the “unexpected results” disclosed in their Specification. Their evidence
is not sufficient to overcome the Examiner’s prima facie case, as it does not
compare the closest prior art (ruthenium on an inert support) with the
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