Appeal No. 1997-2270
Application 08/294,214
disclosed by Green were known in the art would have led one of
ordinary skill in the art to use these groups as protecting
groups for the admitted prior art bisphenol derivative.
Second, even if one of ordinary skill in the art desired
to use appellants’ protecting groups to protect the hydroxyl
groups of the acknowledged prior art bisphenol derivative, the
examiner has not established that such a person would have had
a reasonable expectation of success in doing so. See In re
Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir.
1991); In re O’Farrell, 853 F.2d 894, 902, 7 USPQ2d 1673, 1680
(Fed. Cir. 1988). Appellants provide a declaration by Fujio
Yagihashi (filed January 23, 1996, attachment to paper no. 5)
which shows that when an attempt was made to use the method of
JP ‘473 to add protecting groups to the hydroxyl groups of the
admitted prior art bisphenol derivative, the method was not
successful. The examiner argues that the reason why the
experiment in the declaration failed was that a successful
process, such as appellants’ process, was not used (answer,
page 4). The examiner, however, has provided no evidence that
the process used by appellants was known in the art at the
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