Ex parte SOWERBY - Page 5




          Appeal No. 94-4429                                                         
          Application 07/910,967                                                     
          argument is not well taken because the examiner has not                    
          established that it was known in the art that aldehydes having             
          alpha-hydrogen atoms were suitable.  The examiner has used                 



          appellant’s own teaching against him, which is improper.  See              
          In re Zurko, 111 F.3d 887, 889, 42 USPQ2d 1476, 1479 (Fed. Cir.            
          1997).                                                                     
               For the above reasons, we conclude that the examiner has not          
          carried her burden of establishing a prima facie case of                   
          obviousness.                                                               
                                      DECISION                                       
               The rejections under 35 U.S.C.  103 of claims 1, 2, 5,               
          6 and 33-35 over Braid or Hook and of claims 7, 8 and 11-36                
          over Braid or Hook, each in view of Meinhardt, Watson, Bartlett            
          or Le Suer, are reversed.3                                                 
                                      REVERSED                                       







               3We note that in claim 7, it appears that in the first structure “D”, 
          the “P” should be double bonded to “S” instead of “O”, and that in the second
          structure “D”, the “P” should be double bonded to “O” instead of “S”.  See the
          specification, page 6, line 16 - page 7, line 18.                          
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