Ex parte CHIN et al. - Page 6




          Appeal No. 1997-1301                                                        
          Application No. 08/079,310                                                  


          while Houlihan discloses these same substituents on the ortho               
          carbon of the benzyl ring (i.e., the 6-position; see the                    
          Answer, paragraph bridging pages 3-4).                                      
               The examiner applies Reichmanis for the disclosure of                  
          Scheme III on page 398 which sets forth the reaction mechanism              
          for photogeneration of sulfonic acid via a heterocyclic                     
          intermediate (Answer, page 4).  The examiner concludes that                 
                    [t]he presence of the electron withdrawing group                  
          on        the alpha carbon would also lead to increased steric              
                    hindrance and increased electronic stabilization                  
          during         the light induced photoacid generation. . . .                
          The            presence of the electron withdrawing group on                
          the alpha           carbon would clearly lead to increased                  
          steric hindrance         of the nitro benzyl sulfonyl ester and             
          the intermediate         compound with the heterocyclic ring. .             
          . .                                                                         
                    The proximity of the electron withdrawing group                   
          to        the sulfonyl group would facilitate the cleavage of               
          the            organosulfonyl acid leaving group.  (Answer,                 
          pages                                                                       
                    4-5).                                                             
               However, the examiner provides no convincing evidence or               
          reasoning to support his theory and thus his conclusion.  In                
          re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA                     
          1967)(“Where the legal conclusion of obviousness is not                     
          supported by facts it cannot stand.”).  The teachings of                    
          Houlihan at col. 4, ll. 8-58 are directed to the effect of the              

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