Appeal No. 1996-0896
Application No. 08/091,406
that “R is preferably a linear or branched chain alkyl group2
of 2 to 10 carbon atoms, but in the case of the branched
groups, they may have optical activity.” (See the Answer,
sentence bridging pages 6-7).
We agree with appellants that there is nothing in Saito
that would have suggested or motivated one of ordinary skill
in the art to select the appropriate variables from the many
possibilities to arrive at the claimed compounds (Brief, page
17). See Baird, supra. The examiner has not pointed to any
preferences taught by Saito that would have led the artisan to
the claimed subject matter, nor has the examiner pointed to
any examples where R is branched alkyl or where there are two2
asymmetric carbon atoms. The examiner has stated that Saito
teaches that branched alkyl substituents possess optical
activity and concluded that this “would lead one of ordinary
skill in the art to R3 [sic, R ] as branched alkyl.” (Answer,2
paragraph bridging pages 5-6). However, the examiner has not
established any reason or suggestion as to why the artisan
would be led to an optically active substituent such as
branched alkyl other than to take notice of the “well known
fact” that “[o]ptically active carbons in liquid crystal
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