Ex parte BURJES et al. - Page 3

          Appeal No. 95-0460                                                          
          Application 07/962,382                                                      

               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,                
               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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