Appeal No. 95-3082
Application No. 08/117,546
the 6-isomer in claim 4 (answer, paragraph bridging pages 2-
3).
Appellants argue that the listing, in a claim, of the
inventive materials (i.e., the 6-isomer), along with a number
of possible alternative materials fails to establish a case of
“direct anticipation” (brief, page 5). Appellants submit that
their invention is a “selection invention” and thus is prima
facie obvious but not anticipated (brief, page 6). 3
Appellants assert that claim 4 of Hosaka contains four
possible 1,2-quinonediazide isomers, that claim 4 of Hosaka is
directed to esters in general and not the phenol esters of
appealed claim 13, and the “exhaustive list” of preferred
3Appellants state that “it is agreed that, if this
reference [Hosaka] fails to directly anticipate the invention,
the application would be patentable thereover.” in view of the
data submitted demonstrating the surprising and unexpected
results of the invention (paragraph bridging pages 3-4 of the
brief). The examiner states that the Declaration evidence has
been considered but is incapable of overcoming a rejection
under § 102 (answer, page 3). However, the advisory action
dated July 27, 1994 (Paper No. 21) states that “[t]he 35
U.S.C. 103 rejections are withdrawn in view of the additional
Declaration evidence showing unexpected results.” (paragraph 3
of the advisory action). See the final rejection and the
Kikuchi Declarations dated July 7, 1994 (Paper No. 20), June
30, 1994 (attachment to Paper No. 18), and January 6, 1994
(attachment to Paper No. 13).
4
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