Appeal No. 1997-3374
Application 08/386,393
moieties in the linking group. We find that Grey does not provide any reason,
suggestion, or motivation to make the claimed neopentylene phosphonate.
Accordingly, the rejection must be reversed.
II.
Upon consideration of APPELLANTS’ BRIEF (Paper No. 10), the EXAMINER’S
ANSWER (Paper No. 12), APPELLANTS’ REPLY BRIEF (Paper No. 13), and the
SUPPLEMENTAL EXAMINER’S ANSWER (Paper No. 14), it is
ORDERED that the examiner’s rejection of claims 1 and 4 as being unpatentable
under 35 U.S.C. § 103 over the combination of Grey and Granzow, U.S. Patent
4,255,324 (1981), is reversed.
_________ . _________
Granzow does not cure the deficiencies of Grey. Granzow does not provide any
suggestion, reason or motivation to choose neopentylene as group B in Grey’s vinyl
phosphonate represented by the formula shown at column 3, lines 14-27, from the large
genus of alkylene phosphonates encompassed by the formula. The examiner’s
rejection is based on impermissible hindsight. “To imbue one of ordinary skill in the art
with knowledge of the invention in suit, when no prior art reference or references of
record convey or suggest that knowledge, is to fall victim to the insidious effect of a
hindsight syndrome wherein that which only the inventor taught is used against its
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