Appeal No. 95-0110
Application 07/953,783
Here Suzuki's disclosure of suitable R substituents does not
1
define appellants’ R C=OO moiety. Because the Suzuki disclosure,
1
like Suzuki's claims, does not describe appellants' R1
substituent, Suzuki does not anticipate in the sense of 35 USC
102, under any theory, the subject matter recited in appellants'
claims.
The examiner's statement of the alternative rejection
of the claims under 35 USC 103 is inadequate, both legally and
factually. Indeed, the totality of the rejection may be found at
page 5 of the Answer wherein it is stated that:
it would have been obvious to one of ordinary skill in
the art to make the claimed compounds based upon the
teachings of the reference, specifically claim 1.
However, as we stated above, Suzuki's claim 1 requires that at
least one of the substituents "A" or "B" is a naphthalene moiety.
Suffice it to say the examiner has failed to analyze appellants'
claims vis-à-vis the prior art in the manner required in Graham
v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966).
The examiner has also opined that Suzuki discloses
compounds with "R " moieties which moieties are the reverse ester
1
analogues of appellants' claimed moieties R C=OO and, thus, "are
1
expected to have a similar result on the compound." However, as
the proponent of the theory that Suzuki's "reverse ester"
moieties would have been expected to confer the same or similar
5
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