Appeal No. 96-1122
Application 08/087,134
being diphenylene. However, Matsunga [sic,
Matsunaga] discloses processes for the production of
bisstyryl compounds wherein a substituted aldehyde
is condensed with an aromatic, bis-phosphorous acid
diester or mono-phosphorous acid diester (column 1,
lines 5-50). It would have been obvious to one
skilled in the art to substitute Matsunga’s [sic]
bisstyryl as Ueda’s arylene because varying the
reactants of the condensation reaction of Matsunga
[sic] one would obtain the claimed reaction products
and Ueda’s reaction products because the basic
reactants are of the same or similar chemical
classes. In re Schwarze, 190 USPQ 294.[2]
In order for a prima facie case of obviousness to be
established, the teachings from the prior art itself must
appear to have suggested the claimed subject matter to one of
ordinary skill in the art. See In re Rinehart, 531 F.2d 1048,
1051, 189 USPQ 143, 147 (CCPA 1976). The mere fact that the
prior art could be modified as proposed by the examiner is not
sufficient to establish a prima facie case of obviousness.
See In re Fritsch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783
(Fed. Cir. 1992). The examiner must explain why the prior art
would have suggested to one of ordinary skill in the art the
desirability of the modification. Id. at 1266, 23 USPQ2d at
2In the phrase “substitute Matsunga’s bisstyryl as Ueda’s
arylene” in the above statement, it appears that “bisstyryl”
should be replaced by “biphenylene”.
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