Appeal No. 1997-1538
Application 08/184,172
The examiner rejected claim 14 under 35 U.S.C. § 103(a) as unpatentable over the Gates
reference.
In making the obviousness determination, the changes or differences between the prior art and
the claimed invention is an important consideration. As noted by the Federal Circuit "the changes must
be evaluated in terms of the whole invention, including whether the prior art provides any teaching or
suggestion to one of ordinary skill in the art to make the changes that would produce the [claimed
invention]." In re Chu, 66 F.3d 292, 298, 36 USPQ2d 1089, 1094 (Fed. Cir. 1995), quoting
Northern Telecom, Inc. v. Datapoint Corp., 908 F.2d 931, 935, 15 USPQ2d 1321, 1324 (Fed. Cir.
1990). The examiner notes that Gates teaches the use of polypropylene diols and triols (glycols) and
2,6-ditertiarybutyl-p-cresol. However, these glycols and the cresol are not within the scope of claim
14. The examiner has not directed us to a teaching of any compounds that fall within formulas (I),
(IIA), (IIB) and (IV) of claim 14. Thus, it appears that the difference between the subject matter of
claim 14 and Gates resides in the use of the alcohols having the structures set out in formulas (I), (IIA),
(IIB) and (IV). The examiner has not identified the portion of Gates which provides the suggestion or
teaching that would motivate the person of ordinary skill in the art to use any of the specific alcohols
required by claim 14. In the absence of a teaching, suggestion or explanation of the motivation, the
examiner has not made out a prima facie case of unpatentability under § 103(a). Accordingly, the
rejection of claims 14 and 23 is reversed.
New Ground of Rejection
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