Appeal No. 1995-4851
Application 08/167,656
produced.
The examiner argues that appellants’ starting materials
are analogous to those of Manzer, and that in view of Manzer,
one of ordinary skill in the art would have been motivated to
use appellants’ starting materials in Corbin’s process because
of the reasonable expectation of obtaining known and useful
products (answer, page 3). “When the PTO seeks to rely upon a
chemical theory, in establishing a prima facie case of
obviousness, it must provide evidentiary support for the
existence and meaning of that theory. [citation omitted] The
known structural relationship between adjacent homologs, for
example, supplies a chemical theory upon which a prima facie
case of obviousness of a
compound may rest.” In re Grose, 592 F.2d 1161, 1167-68, 201
USPQ 57, 63 (CCPA 1979). The examiner has merely stated that
the starting materials are analogous, and has not provided the
required evidence that the relied-upon similarity of the
starting materials would have led one of ordinary skill in the
art to appellants’ claimed process. Hence, we do not find the
examiner’s argument to be convincing.
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