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.
1985).
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).
3
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