Ex parte SOWERBY - Page 3

          Appeal No. 94-4429                                                         
          Application 07/910,967                                                     
          aforementioned rejections are not well founded.  Accordingly,              
          these rejections will be reversed.                                         
               Each of appellant’s claims requires that the aldehyde have            
          at least one alpha-hydrogen atom.  That is, in the aldehyde,               
          which is represented by R CHO, the R  group must have at least1       1                                         
          one hydrogen on the carbon atom adjacent to the -CHO.  Braid               
          states that the aldehyde used to make his composition has no               
          alpha-hydrogen atoms (col. 1, lines 39-40; col. 2, lines 8-10).            
          Hook uses only formaldehyde or “a formaldehyde yielding substance          
          such as paraformaldehyde, trioxymethylene and the like” (col. 1,           
          line 46 - col. 2, line 2).2                                                
               The examiner points out this difference and argues that               
          appellant’s claimed invention clearly would have been prima facie          
          obvious to one of ordinary skill in the art based on the                   
          rationale in In re Durden, 763 F.2d 1406, 226 USPQ 359 (Fed. Cir.          
               The examiner reached her conclusion of obviousness of                 
          appellant’s claimed invention based on a per se rule that use              
          of a new starting material in a prior art process would have been          
          obvious to one of ordinary skill in the art.  As stated by the             
          Federal Circuit in In re Ochiai, 71 F.3d 1565, 1572, 37 USPQ2d             

               The remaining references are relied upon by the examiner only for2                                                                    
          motivation to use a neutralizing agent in the Braid and Hook processes     
          (answer, page 4).                                                          

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