Appeal No. 1997-1301
Application No. 08/079,310
of the alpha-substituent. Reichmanis teaches the same effect
for substituents at the 6-position as Houlihan and also is
silent regarding any substitution at the alpha carbon of the
benzyl group (see Reichmanis, page 398, right column).
Considering the entire scope of the prior art, Houlihan ‘136
discloses alpha substitution of nitrobenzyl sulfonyl esters
useful as photoacid generators but teaches that the alpha
substituent is "advantageously H or CH ." (see col. 2, l. 68;
3
Reply Brief,
page 14). On this record, both of these substituents yield a
F* much less than the claimed requirement of "at least 1.5."
(see the Brief, page 11). Accordingly, from the prior art as
a whole, we find no motivation or reasoning for making the
substitution proposed by the examiner, much less a
substitution that yields the F* values required by claim 1 on
appeal. In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614,
1617 (Fed. Cir. 1999)("Broad conclusionary statements
regarding the teaching of multiple references, standing alone,
are not ‘evidence’ [of a suggestion, teaching or motivation to
combine references].”).
8
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