Appeal No. 1997-3374
Application 08/386,393
ORDERED that the examiner’s rejection of claims 1 and 4 as being unpatentable
under 35 U.S.C. § 103 over Grey, U.S. Patent 5,310,808 (1994), is reversed.
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This decision is controlled by In re Jones, 958 F.2d 347, 349-51, 21 USPQ2d
1941, 1943-44 (Fed. Cir. 1992).
Appellants’ claims are directed to compounds that contain a neopentylene
phosphonate moiety, in particular, neopentylene 1-phenylvinylphosphonate. The
claimed phosphonate is not prima facie obvious over Grey’s vinyl phosphonates, even
though the claimed phosphonate is a member of the genus of vinyl phosphonates
broadly disclosed in Grey for the following reasons: (1) Grey describes a large genus of
alkylene phosphonate containing-phenylvinyl compounds (the group B in the formula at
column 3, lines 14-27, can be a branched or linear alkylene group of unlimited length);1
(2) Grey discloses ethylene and propylene 1-phenylvinyl phosphonates (column 3, lines
32-33), but does not explicitly describe neopentylene phosphonates. (3) The claimed
neopentylene phosphonate is not sufficiently similar in structure to Grey’s propylene
phosphonate to render it prima facie obvious. Neopentylene, -CH2-C(CH3)2-CH2-, has a
carbon atom substituted with four carbon-containing moieties in the linking group; while
propylene, -CH(CH3)-CH2-, has a carbon atom substituted with two carbon-containing
1 The examiner erroneously states that “B may be up to 60 carbons.” Answer,1
page 4, lines 14-15. It is the R and R' groups of the formula depicted at column 3, lines
3-8 which may each be C1-C30.
2
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