Appeal No. 96-0724
Application No. 07/817,232
reaction products, carried out by analogous reactions as
claimed, no reference is of record which discloses the
particular starting reactants or materials (i.e., the claimed
substrates), nor has the examiner explained why reference
disclosures of “analogous” substrates utilized in the prior
art reaction schemes would have provided a suggestion for the
use of the claimed substrates.
It is the examiner’s legal position that the mere use of
different starting materials, whether novel or known, in a
conventional process to produce a product one would expect
therefrom, does not render the process unobvious. Further,
the examiner contends that once prior art has been cited
showing a general reaction to be old in the art, the burden is
shifted to appellants to present evidence that a different
substituent on a substrate would affect the acylation or
hydrolysis reaction disclosed in the prior art. For legal
support, the examiner relies on, inter alia, In re Durden, 763
F.2d 1406, 1409
226 USPQ 359, 360-361 (Fed. Cir. 1985). However, as set forth
in
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