Appeal No. 95-4830
Application 07/899,361
equivalence of the R-COO- and R-OCO- terminal ester groups.
Actual functional equivalence is not enough to justify refusal
of a patent to a compound having one of the terminal ester
groups when a compound having the other of the terminal ester
groups is disclosed in the prior art. See In re Ruff, 256
F.2d 590, 599, 118 USPQ 340, 348 (CCPA 1958). The functional
equivalence must be disclosed in, or have been obvious to one
of ordinary skill in the art in view of, the prior art. See
id. Appellants’ disclosure “may not be used against them as
prior art absent some admission that matter disclosed in the
specification is in the prior art.” In re Wertheim, 541 F.2d
257, 269, 191 USPQ 90, 102 (CCPA 1976). The examiner has not
shown, and we do not independently find, where appellants have
made such an admission.
The examiner argues that Suzuki teaches tri-stable states
(answer, page 7). Suzuki shows tri-stable phases (Fig. 7,
8D). The examiner’s argument, however, is deficient because
the examiner has not explained why Suzuki would have fairly
suggested, to one of ordinary skill in the art, compounds
having an R-COO- terminal ester group.
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