Appeal No. 1996-2357
Application 08/124,617
The examiner does not explain why Boustany or Kleiman,
taken alone, would have fairly suggested appellants’ claimed
invention to one of ordinary skill in the art. We therefore
reverse the rejections over these references applied
individually.
Regarding the combination of these references with Fujii,
the examiner argues that it would have been obvious to one of
ordinary skill in the art to use Fujii’s compounds as
vulcanization accelerators because their structures are
sufficiently similar to those of known dithiobenzothiazole
vulcanization accelerators (answer, page 4).
Structural similarity is some evidence of obviousness and
is a factor to be taken into account, along with other
relevant factors, when determining obviousness of appellants’
claimed invention. See In re Mehta, 347 F.2d 859, 863-64, 146
USPQ 284, 287 (CCPA 1965). “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
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