Appeal No. 94-3359
Application 07/941,566
over the same reference, Scullard, alone or, taken with any of
IBM, Hoffman, Henzel and Schuler. Because we have affirmed the
rejection of claims 1 through 4, 7 and 9 through 12 under 35 USC
102 as being anticipated by Scullard and because anticipation is
the epitome of obviousness, we shall summarily affirm the
rejection under 35 USC 103 as it applies to claims 1 through 4, 7
and 9 through 12 and only separately address the alternative
rejection of claim 8 under 35 USC 103.
The examiner has not directed our attention to what
disclosure in Scullard would have motivated the person of
ordinary skill in the art to have made the Scullard compounds but
with the polymeric backbone required by claim 8. Neither has the
examiner directed our attention to that portion of any of the
secondary references relied on as evidence that the person of
ordinary skill in the art would have been motivated from the
secondary references to modify Scullard and, thus, obtain
appellants' invention as described in claim 8. Indeed, the
examiner's only specific discussion of the requirements of claim
8 may be found at page 11 of his answer in discussing the
rejection under 35 USC 102(b) wherein he states:
Claim 8 relates to a non elected species
which has not been considered and
searched. See the Office action mailed
on May 28, 1993.
Suffice it to say that examiner has failed to make out a prima
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