Ex parte BURJES et al. - Page 4

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

          the examiner has not established on this record that the                    
          actual structural relationship between the claimed compounds                
          and those of Beaver and Sullivan is so close as to have                     
          reasonably suggested the claimed compounds as a whole to one                
          of ordinary skill in this art at the time the claimed                       
          invention was made and thus has not established that the                    
          claimed compounds would have been prima facie obvious as a                  
          whole.  Indeed, we note that Sullivan teaches that it is                    
          difficult to prepare such compounds and limits the alkyl                    
          substituent para to the hydroxy subsistent on the phenol                    
          moiety to no more than 3 carbon atoms.  We find no basis in                 
          either Sullivan or Beaver, on which to conclude that, in view               
          of such teachings in Sullivan, the presence of an alkyl                     
          substituent in a different position on the ring of Sullivan’s               
          compounds, or of Beaver’s compounds, would have reasonably                  
          suggested to one of ordinary skill in this art to extend the                
          alkyl group in the para position to at least 7 carbon atoms                 
          (answer, page 5, lines 4-7).  We also cannot conclude that one              
          of ordinary skill in this art would have found it obvious from              
          the teachings of Beaver alone or in combination with Sullivan               
          that the alkyl substituents and the alkylene bridge could be                
          in any position relative to the hydroxy substituent on the                  
          phenol moieties and still possess similar properties (answer,               
          sentence bridging pages 3-4).  Cf. In re Payne, 606 F.2d 303,               
          315, 203 USPQ 245, 254-55 (CCPA 1979).                                      
               The examiner’s decision is reversed.                                   
               This application is remanded to the examiner to consider               
          the references acknowledged by appellants in their                          
          specification (pages 2-3) and the references submitted by                   
          appellants in their Information Disclosure Statements (Papers               
          No. 4 and 15) with respect to the applicability thereof to the              

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