Ex parte AIHARA et al. - Page 6




             Appeal No. 95-4830                                                                                   
             Application 07/899,361                                                                               


             -COO- or -OCO-, A can be, inter alia, tetralin or 1,2,3,4-                                           
             tetrahydrophenanthrene, q can be either zero or 1, and R  can              2                         
             be, inter alia, an alkyl group having 1 to 15 carbon atoms,                                          
             wherein one or more CH  groups are replaced by a group from a                                        
                                          2                                                                       
             list including -CHhalogen-, -O-CO- and -CO-O- (col. 1, line 6                                        
             - col. 3, line 38).  In our view, such a Hopf compound is                                            
             sufficiently similar to that of Suzuki that one of ordinary                                          
             skill in the art would have expected Hopf’s -O-CO- and -CO-O-                                        
             terminal esters to be interchangeable not only in Hopf’s                                             
             compound, but also in that of Suzuki.  Thus, one of ordinary                                         
             skill in the art would have been motivated to use either of                                          
             these terminal esters in the Suzuki liquid crystal compound                                          
             and would have had a reasonable expectation of success in                                            
             doing so.  Accordingly, use of a terminal alkanoyloxy group                                          
             instead of a terminal alkoxycarbonyl group in Suzuki’s                                               
             compound would have been prima facie obvious to one of                                               
             ordinary skill in the art in view of Hopf.  See In re Vaeck,                                         
             947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991); In                                         
             re O’Farrell, 853 F.2d 894, 902, 7 USPQ2d 1673, 1680 (Fed.                                           
             Cir. 1988); In re Longi, 759 F.2d 887, 892-93, 225 USPQ 645,                                         

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