Appeal No. 1997-2270
Application 08/294,214
JP ‘473 discloses fused lactones wherein a group can be
either hydroxyl or a protected hydroxyl, and discloses a
method for protecting the hydroxyl groups of the fused
lactones (pages 2 and 15).
The examiner argues that “[i]t would have been prima
facie obvious at the time the claimed invention was made to
protect the hydroxy groups of the prior art by using the
conventional hydroxy groups as taught by Japanese patent J 02-
311473 and Greene et al. to form the protected prior art
compounds without the loss of the same activity” (answer, page
3). For the following reasons, the examiner’s argument is not
persuasive.
First, as argued by appellants (brief, pages 4-5), the
examiner has not explained why the applied prior art would
have motivated one of ordinary skill in the art to use
protecting groups for the hydroxyl groups of the prior art
bisphenol derivative. Appellants argue that the fused
lactones of JP ‘473 are not structurally similar to
appellants’ claimed compound (brief, page 5), and the examiner
does not challenge this argument. Also, the examiner has not
established that the mere knowledge that the protecting groups
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