Appeal No. 1997-2270
Application 08/294,214
Theodora W. Greene and Peter G.M. Watts (Greene), Protective
Groups in Organic Synthesis 413 (John Wiley & Sons 1991).
THE REJECTION
Claims 1 and 5-9 stand rejected under 35 U.S.C. § 103 as
being unpatentable over appellants’ acknowledged prior art in
view of JP ‘473 and Greene.
OPINION
We have carefully considered all of the arguments
advanced by appellants and the examiner and agree with
appellants that the aforementioned rejection is not well
founded. Accordingly, we reverse this rejection.
Appellants acknowledge that at the time of their
invention a bisphenol derivative was known in the art which
differed from appellants’ claimed compound only in that the
substituents on the phenyl rings were unprotected hydroxyl
groups rather than appellants’ protected hydroxyl (i.e., -OR)
substituents (specification, page 1).
Green discloses that the protecting groups recited in
appellants’ claim 1 were known in the art at the time of
appellants’ invention (page 413). Green does not disclose a
method of adding these protecting groups to compounds.
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