Appeal No. 1996-1716
Application No. 08/344,532
(Koleske, column 2, lines 54-58; Blount, column 10, lines 41-
46) and coating (paint) compositions (Tominaga, column 2,
lines 46-61). The secondary references are directed to
electrophotographic developers (Nishikawa, column 3, lines 66-
68; Tanaka, page 2) and a molding composition (Aharoni, column
1, lines 8-11). The examiner has not presented evidence of
any teaching, suggestion or motivation to use the alkyl-
substituted dicarboxylic acids of the secondary references in
place of the dicarboxylic acids of the primary references.
The examiner has pointed to Tanaka as “ascribing properties
such as good fluidity and high glass transition temperature to
an alkyl group-appended succinic acid,” properties which are
“desirable” in the hydroxyl-functional polyesters of the
primary references (Answer, page 6, also see page 5 of the
Answer). However, the examiner has not supported this
statement by pointing to where Tanaka specifically ascribes
these desirable properties to only the “alkyl group-appended
succinic acid,” where the primary references disclose the
desirability of such properties, and why one of ordinary skill
in the art would have made the proposed modification when
Tanaka is directed to electrophotographic developer
8
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