Appeal No. 95-0110
Application 07/953,783
properties on the compound, per se, as appellants' R C=OO
1
moieties would confer on appellants' claimed compounds, per se,
it was incumbent upon the examiner to provide some evidence
supporting this theory. This the examiner has failed to do.
Finally, because we have determined that the examiner
has failed to establish that appellants' claimed compounds would
have been prima facie obvious from Suzuki's disclosure, it was
unnecessary for appellants to come forward with countervailing
evidence of non-obviousness. Having said that, however, we note
that we have considered the Kawamura declaration and find that it
at least establishes a certain degree of unpredictability with
respect to S * phase temperature width within the broad family
(3)
of compounds arguably embraced by Suzuki's disclosure but bearing
appellants' R C=OO moiety. Accordingly, the examiner's
1
pronouncement that appellants' claimed compounds would have been
expected to have properties similar to the compounds disclosed by
Suzuki on the apparent theory that compounds with similar
structures would be expected to have similar properties is not
only unfounded but is also contrary to the only evidence in this
record which addresses the issue.
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