Ex parte KAMAKURA et al. - Page 3




                 Appeal No. 1997-0042                                                                                                                   
                 Application No. 07/992,177                                                                                                             


                 ordinary skill in the art to choose R  as methyl since Sasaki                                                                          
                                                                                    1                                                                   
                 teaches this selection at column 3, line 50 (Id.).  The                                                                                
                 examiner also concludes that it would have been obvious to one                                                                         
                 of ordinary skill in the art that the ethylene oxide group                                                                             
                 “may be next to the hydroxyl [hydrogen] group” because Sasaki                                                                          
                 teaches that the 2-4 carbon alkylene group is either random or                                                                         
                 block copolymerized (Answer, sentence bridging pages 3-4).                                                                             
                          Appellants argue that the claimed compositions are not                                                                        
                 sufficiently similar to those specifically disclosed by Sasaki                                                                         
                 to render the claimed subject matter prima facie obvious                                                                               
                 (Brief, page 10).                                                                                                                      
                          Sasaki discloses base oils for refrigerator oil                                                                               
                 compositions where R  of the specified polyoxyalkylene glycol                                                                          
                                                     1                                                                                                  
                 monoethers formula may be an alkyl group having 1-18 carbon                                                                            
                 atoms (column 3, lines 40-48).  Sasaki specifically lists                                                                              
                 eighteen alkyl groups included in R  (including methyl), with                                                                          
                                                                                1                                                                       
                 eight groups listed as preferred (also including methyl, see                                                                           
                 column 3, lines 50-55).   Of the eight values listed for R ,1                                                            2                               
                 Sasaki teaches that four values are preferred (including                                                                               

                          1As discussed infra, Sasaki also discloses a monomethyl                                                                       
                 ether base oil in Example 15, Table 1, columns 9-10.                                                                                   
                                                                           3                                                                            





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