Appeal No. 1996-4135 Page 5
Application No. 08/346,325
polycarbonate-polysiloxane copolymer by the method exemplified
in example 3-6 of Okamoto. In this regard, the examiner,
maintains, in effect, that such a substitution would have been
suggested by (1) the positional isomeric relationship of 2-
allyl phenol to 4-allyl phenol (answer, page 4), or (2) the
alternativeness of 2-allyl phenol and 4-allyl phenol as taught
by Davis in producing a polysiloxane-polycarbonate copolymer.
We cannot agree with either rationale for the proposed
modification. Structural similarity may provide the requisite
suggestion to modify a known compound to arrive at a new
structurally similar compound where there is a reasonable
expectation that a skilled artisan would make the new compound
so as to obtain the same properties that are desirable in the
old structurally similar compound. However, there are no per se
rules of obviousness. Here, we cannot subscribe to the
examiner's theory since the positional isomerism of one of the
multiple reactants that may be utilized in the formation of the
claimed polycarbonate-polysiloxane block copolymers with one of
the reactants that may be used in forming the prior art
copolymer clearly does not intuitively result in product
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