Ex parte WETTLING

Board of Patent Appeals and Interferences

Jan 28, 1998

08170985 (B.P.A.I. Jan. 28, 1998)

Application for patent filed December 21, 1993. According1
to the appellant, this application is a division of Application
07/996,311, filed December 23, 1992, now abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte THOMAS WETTLING
__________
Appeal No. 95-2074
Application 08/170,9851
__________
ON BRIEF
__________
Before JOHN D. SMITH, PAK and ELLIS, Administrative Patent
Judges.
ELLIS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 3 and
4, the only claims pending in the application.
As a preliminary matter we note the statement on p. 3 of the
appellant’s Brief that the claims stand or fall together. 37 CFR
Appeal No. 95-2074
Application 08/170,985
Our decision is based on a certified copy of the German2
patent application, which is of record in the file.
2
§ 1.192(c)(5)(1994); now 37 CFR § 1.192(c)(7). Accordingly, for
purposes of this appeal, we will consider the issues as they
apply to representative claim 3, which reads as follows:
3. A process for preparing a tertiary phosphine which
comprises: heating a phosphine dihalide in the presence of
silicon powder at a temperature of from 100 to 300EC to reduce
the phosphine dihalide to the tertiary phosphine.
The references relied on by the examiner are:
Silicon Monoxide, Merck Index (Merck and Co., Rahway, NJ), 9th
ed., p. 1099 (1976).
Natoli 1,259,883 Feb. 01, 1968
(German Patent)
Claims 3 and 4 are rejected under 35 U.S.C. § 103 as being
unpatentable over Natoli in view of Merck. 2
We reverse.
The examiner predicates his conclusion of obviousness on
Natoli, a German patent application which discloses a method of
reducing a phosphine dihalide to a tertiary phosphine in the
presence of a metal such as aluminum, and Merck which states that
silicons may be used “[a]s a reducing agent like aluminum in high
temp[erature] reactions.” Merck, p. 1099, col. 1. The examiner
concludes on p. 4 of the Answer that
Appeal No. 95-2074
Application 08/170,985
3
one of ordinary skill in the art would have been motivated
to utilize the “high temperature” reducing agent of Merck,
namely silicon, in the high temperature reduction reaction
of Natoli in place of the aluminum disclosed therein to
obtain the instant results of appellants. This motivation
is derived from the reasonable expectation that the desired
reduction of the phosphine dihalide to tertiary phosphine
would result in the process of Natoli when using the silicon
reducing agent of Merck and especially because Merck
specifically suggests the equivalence of aluminum, used by
Natoli, and silicon as “reducing agent(s).”
We find the examiner’s position untenable.
In order to establish a prima facie case of obviousness, the
examiner has the initial burden of demonstrating that it would
have been obvious to one of ordinary skill in the art to
substitute a metal, such as aluminum, for the nonmetal, silicon,
in the method of reducing a phosphine dihalide to a tertiary
phosphine described by Natoli. Here, the examiner has not met
that burden.
In the case before us, the examiner has not established,
through the use of factual evidence, or sound scientific
reasoning, that it would have been obvious to those of ordinary
skill in the art to employ silicon in the reaction disclosed by
Natoli. For example, the examiner has not provided any reasons
as to why it would have been obvious to use the non-metal
silicon, when Natoli requires the use of (i) metals such as zinc,
manganese, aluminum and magnesium, preferably aluminum, and (ii)
Appeal No. 95-2074
Application 08/170,985
Merck states that silicon may be used “[a]s a reducing3
agent like aluminum in high temp reactions.” Merck, p. 1099.
4
a metal which has a redox potential of -0.75 to -2.5V. Natoli,
p. 5, the penultimate sentence. Rather, we find unsupported
allegations, throughout the Answer, that a single phrase in
Merck, would have motivated one of ordinary skill in the art to3
employ silicon in the type of reaction taught by Natoli, and that
such persons would have had a reasonable expectation of success
in obtaining the claimed results.
The appellant, on the other hand, has at least provided some
evidence that the phrase in Merck upon which the examiner relies
so heavily, refers to use of silicon as a reducing agent in the
metallurgical industry and at temperatures which greatly exceed
the claimed 300EC limitation. The examiner has misunderstood the
appellant’s argument and, consequently, incorrectly dismissed
this evidence as being irrelevant. However, we find from a fair
reading of the appellant’s evidence that it indicates that
referenced phrase in Merck would not necessarily have suggested
to one of ordinary skill in the art, the interchangeability of
aluminum and silicon in the claimed method. Moreover, the only
suggestion on this record for the use of silicon in the reduction
Appeal No. 95-2074
Application 08/170,985
5
of a phosphine dihalide to a tertiary phosphine that we find is
in the appellant’s specification. Accordingly, in our opinion,
the examiner has relied on impermissible “hindsight” to arrive at
the conclusion that the claimed invention is obvious over the
applied prior art. In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d
1780, 1784 (Fed. Cir. 1992); Interconnect Planning Corp. v. Feil,
774 F.2d 1132, 1138, 227 USPQ 543, 547 (Fed. Cir. 1985) (“It is
impermissible to engage in hindsight reconstruction of the
claimed invention, using the applicant’s structure as the
template and selecting elements from the references to fill the
gaps”). Accordingly, the rejection is reversed.
Appeal No. 95-2074
Application 08/170,985
6
The decision of the examiner is reversed.
REVERSED
)
JOHN D. SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHUNG K. PAK )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOAN ELLIS )
Administrative Patent Judge )
Appeal No. 95-2074
Application 08/170,985
7
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