Appeal No. 95-3340
Application 07/939,172
440 F.2d 442, 169 USPQ 423 (CCPA 1971) with In re Baird, F.3d
380, 29 USPQ2d 1550 (Fed. Cir. 1994); and In re Jones, supra.
Second, even assuming arguendo that one of ordinary skill would
have made the selections proposed by the examiner, the proffered
compound differs from the claimed compound by the positioning of
a -CH - group between the central carbon and NF group attached2 2
to the central carbon. And on this record, the examiner has
provided no evidence that one of ordinary skill in the art of
explosives and/or propellants, after making the proposed
selections, would have then been motivated to modify the
proffered compound from a tertiary compound to a quaternary
compound to arrive at the claimed compound. In re Grabiak, 769
F.2d at 732, 226 USPQ at 872. (There must be adequate support in
the prior art for the change in structure as proposed by the
examiner in order to complete the PTO's prima facie case and
shift the burden of going forward to the applicant).
Accordingly, we are constrained to reverse the
examiner's rejections based on Rohrback alone or in combination
with the secondary references.
REVERSED
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007