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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