Appeal No. 97-2174
Application No. 08/214,763
examiner. This is because the applied prior art contains
utterly no teaching or suggestion that such a substitution
would serve any useful purpose whatsoever. In this last
mentioned regard, we appreciate that the examiner has stated
“[t]he surface active dispersing agent of WO 92/00062 and the
acid ester of JP 4,169,554 are functionally equivalent”
(answer, page 4). This statement is completely without
evidentiary support. Certainly, the examiner points to
nothing in the applied references, and we find nothing
independently, to support the asserted equivalency. It
follows that no basis at all exists for the examiner’s
position that an artisan with ordinary skill would have been
motivated to effect the substitution under consideration.
Even if this substitution were made, it appears that the
resulting formulation/method would not correspond to the
formulation/method defined by the appealed claims. More
particularly, we find merit in the appellants’ argument that
the acid esters of the Japanese reference do not correspond to
the here claimed dispersing aid compound which comprises a
chain of diol/diacid condensate units. On the other hand, the
examiner has made no reasonably specific rebuttal to this
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