Appeal No. 1996-4135 Page 7
Application No. 08/346,325
any advantage or convincing reason to use 4-allyl phenol in
forming the PDMS of Okamoto so as to modify the expected bent
structure of the copolymers formed with the 2-allyl phenolic
links (Example 3-6). Bialous, as further relied upon by the
examiner with respect to claims 8, 9, 12 and 13, does not cure 2
the above-noted deficiency.
Here, the most that can be concluded from the collective
teachings of the applied references is that it might have been
obvious for one of ordinary skill in the art to try using a 4-
allyl phenol as a substitute reactant in Okamoto. Of course,
it is by now well settled that such is not the proper standard
for determining obviousness under 35 U.S.C. § 103. See In re
O’Farrell, 853 F.2d 894, 903-04, 7 USPQ2d 1673, 1681 (Fed. Cir.
1988). “Where the legal conclusion [of obviousness] is not
supported by facts it cannot stand.” In re Warner, 379 F.2d
1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389
U.S. 1057 (1968).
2We note that the examiner inexplicably fails to group
claim 11, which depends from claim 12, with the claims that
are rejected over the combined teachings of Okamoto and
Bialous with or without Davis.
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