Ex Parte ROTH et al - Page 11




                  Appeal No. 1997-3036                                                                                                                    
                  Application No. 08/268,094                                                                                                              


                  Kajiwara teaches that partially post-glycidylated epoxy resins can be formed by epoxidizing                                             
                  phenolic hydroxyl groups and pendant alcoholic hydroxyl groups.  (Kajiwara, col. 1, line 51 to                                          
                  col. 2, line 21).  The partially post-glycidylated epoxy resins are described as having excellent                                       
                  heat resistance and toughness and the cured epoxy resin product is mentioned as extremely useful                                        
                  in a wide variety of products, such as photoresists.  (Kajiwara, abstract).  Nevertheless, Kajiwara                                     
                  fails to describe or suggest the presence of acrylate groups, let alone pendant acrylate groups, on                                     
                  the partially post-glycidylated epoxy resins.  Failing to mention the presence of acrylate groups,                                      
                  Kajiwara simply does not disclose or suggest appellants' claimed epoxy acrylates.                                                       


                           The References Taken as a Whole                                                                                                
                           The Examiner submits that it would have been obvious to use the composition of Fekete                                          
                  or Takiyama and replace their conventional epoxides with the post-glycidylated epoxides of                                              
                  Green or Kajiwar as the secondary references disclose that their post-glycidylated epoxides                                             
                  possess improved properties.  The examiner also contends that an acrylated epoxide is merely an                                         
                  epoxy resin with altered functional groups, wherein the matrix of the system is not changed.                                            
                           As discussed above, the primary references Fekete and Takiyama relate to epoxides                                              
                  formed from glycidyl ethers where the glycidyl groups are present only at the ends of their                                             
                  respective compounds.  Neither Fekete nor Takiyama contemplate the employment of a glycidyl                                             
                  ether compound having pendant glycidyl ether moieties.  Similarly, the secondary references,                                            
                  Green and Kajiwara, fail to mention or suggest that post-glycidylated epoxides may be reacted                                           
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