Appeal No. 95-1250
Application 07/901,722
groups. The examiner has based his conclusion of obviousness on what he considers the apparent
similar reaction conditions disclosed by Hayashi and conditions set forth in appellant’s single example.
We do not find this analysis as being a basis for supporting obviousness. The examiner’s analysis
does not explain how one skilled in the art would be led to the improved developer compound as
claimed herein in the absence of any suggestion or teaching in Hayashi of using an organic acid having
at least four carboxyl groups and reacting the organic acid with a formaldehyde free phenol as
disclosed by Pokora. For these reasons, we find that the examiner has not made out a prima facie
case of obviousness for the rejection of claims 1-3, 19-21 and 24 over Pokora in view of Hayashi.
As for the rejection of the claims over Pokora in view of Hayashi and Nikolaev, this rejection
too must fall. Nikolaev does not make up for the deficiencies of Hayashi. Although Nikolaev teaches
reacting a novolak phenolformaldehyde with pyromellitic dianhydride, the reference teaches away
from the claimed invention. Appellant’s basic phenol is a formaldehyde free phenol while Nikolaev
is limited solely to curing phenolformaldehyde resins. Moreover, there is no suggestion in the
reference that the phenolic resin cured with pyromellitic dianhydride would be useful as a developer.
The examiner has not provided any analysis of the prior art as to how one skilled in the art would
have been led from the combined teachings of Pokora, Hayashi and Nikolaev to the claimed phenol
resin developer as set forth in the claims on appeal. We conclude that the only suggestion to combine
a pyromellitic anhydride with Pokora’s phenolic resin came from appellant’s disclosure, and not from
the teachings of the prior art. Accordingly, the rejection of claims 1-3, 19-21 and 24 over Pokora
in view of Hayashi and Nikolaev is reversed.
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