Appeal No. 95-0460
Application 07/962,382
Opinion
We have carefully reviewed the record on this appeal and
based thereon find ourselves in complete agreement with
appellants that the examiner has failed to make out a prima
facie case that the claims do not comply with any of the three
statutory provisions as applied in the two grounds of
rejection. With respect to ' 112, second paragraph, the
examiner has not provided any explanation why one skilled in
this art could not have determined the scope of the appealed
claims from the disclosure in the specification (pages 5-7)
pointed to by appellants. The examiner has also failed to
provide any scientific explanation why one of ordinary skill
in the art could not make and use the claimed compounds and
compositions from the disclosure in the specification without
undue experimentation as required by ' 112, first paragraph,
enablement.
With respect to ' 103, we observe that the compounds
disclosed by Beaver contain the hydroxy substituent in the
para rather than in the ortho position to the alkylene bridge
on the phenol moiety as in the claimed compounds, with the
other two ring substituents also in relatively different
positions. Thus, the claimed compounds and those of this
reference may be said to be position isomers. The difference
between the claimed compounds and those prepared by the
processes disclosed by Sullivan have an alkyl substituent of 1
to 3 carbon atoms para to the hydroxy substituent on the
phenol moiety rather than an aliphatic hydrocarbon group
containing at least 7 carbon atoms as in the claimed
compounds. Thus, the claimed compounds may be said to be
higher homologs of the compounds of this reference. However,
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