Appeal No. 1995-1539
Application No. 07/950,388
examiner’s decision rejecting claims 1, 2 and 4 under 35
U.S.C. § 102.2
We turn next to the § 103 rejection of claim 5 over the
combined disclosures of Nader, Kvakovszky, Pine and the
admitted prior art. At issue is what the combined teachings
of the references would have suggested to those of ordinary
skill in the art. In re Young, 927 F.2d 588, 591, 18 USPQ2d
1089, 1091 (Fed. Cir. 1991); In re Keller, 642 F.2d 413, 425,
208 USPQ 871, 881 (CCPA 1981). The examiner concludes that it
would have been obvious to employ the claimed sulfonating
reagent for the alkoxycarbonylation agent in the process
described in, for example, Nader or Kvakovszky. Supplemental
Answer, page 3. In support of this conclusion, the examiner
finds (Supplemental Answer, pages 3 and 4) that
said sulfonating reagent is notoriously
well known to the prior art and one of ordinary
skill in the art would expect that said reagent
2In the event of further prosecution, the examiner is to
determine whether the appealed claims embrace an admittedly
known process of making a composition of matter comprising
chemically reacting a class of known compounds, substituted 4-
hydroxystyrenes, with an unspecified reactant, or by itself,
since the claim language, which recites how the substituted
4-hydroxystyrene is prepared, is in product-by-process format.
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