Appeal No. 95-4830
Application 07/899,361
experiment, has a tristable S*(3) phase upon heating. Thus,
the evidence of record taken as a whole does not show that a
compound within the scope of Suzuki, which has an external
ester which is the reverse of that of the compound in
Experiment 4 of the declaration, has no tristable S*(3) phase
upon heating.
Fourth, the comparisons in the declaration are not
commensurate in scope with appellants’ claims. Only compounds
with an R having 8 or 10 carbon atoms and an R having 61 2
carbon atoms are used in the comparisons, whereas appellants’
claims encompass R having 5-18 carbon atoms and R having 6-161 2
carbon atoms, and Suzuki discloses R having 1-20 carbon atoms
1
and R having 4-14 carbon atoms (col. 2, lines 34-44). See
2
Grasselli, 713 F.2d at 743, 218 USPQ at 778; Clemens, 622 F.2d
at 1035, 206 USPQ at 296. Appellants provide no explanation
as to why the great number of compounds encompassed by
appellant’s claims would behave as a class in the same manner
as the particular compounds tested. See Lindner, 457 F.2d at
508, 173 USPQ at 358; Susi, 440 F.2d at 445-46, 169 USPQ at
-12-12
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