Appeal No. 95-4830
Application 07/899,361
reversed. Thus, the cause-and-effect relationship which
appellants desire to show between terminal ester configuration
and existence of a tristable S*(3) phase upon heating is lost
in multiple unfixed
variables. See In re Heyna, 360 F.2d 222, 228, 149 USPQ 692,
697
(CCPA 1966); In re Dunn, 349 F.2d 433, 439, 146 USPQ 479, 483
(CCPA 1965). Also, since Suzuki discloses both -COO- and -
OCO- internal ester configurations (col. 2, lines 44-47), the
declaration does not provide a comparison with the closest
prior art. See In re Baxter Travenol Labs., 952 F.2d 388,
392, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991); De Blauwe, 736
F.2d at 705, 222 USPQ at 196.
Third, although the comparison of Suzuki’s compound in
Experiment 2 and appellants’ compound in Experiment 4 shows
that appellants’ claimed compound, but not Suzuki’s compound,
has a tristable S*(3) phase upon heating, appellants’
specification (pages 29-31) shows that a Suzuki compound
having the same terminal ester as that in Experiment 2, but
having an internal ester which is the reverse of that in this
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