Appeal No. 2002-0448 Page 7
Application No. 09/194,824
CCPA 1292, 1296, 428 F. 2d 1341, 1344, 166 USPQ 406, 409
(1970). … When prior art compounds essentially "bracketing" the
claimed compounds in structural similarity are all known as
pesticides, one of ordinary skill in the art would clearly be motivated
to make those claimed compounds in searching for new pesticides.
This backdrop sets the scene for the examiner’s rejection under 35 U.S.C. § 103
(see e.g., Answer, page 10, “[s]tructural similarities may provide requisite
motivation or suggestion to modify known compounds to obtain new
compounds…”).
According to the examiner (Answer, page 4), “Pereira teaches esters of
[a] polyethoxylated moiety, and a polypropoxylated moiety which differ from the
instant fatty alcohol polyglycol ethers by a single methyl group, see formula II.”
The examiner recognizes, however, that “Pereira lacks a specific teaching for the
use of their products as a viscosity modifier….” Id. To make up for this
deficiency the examiner relies on Tesmann and Turchini. According to the
examiner (Answer, page 5), the products of Tesmann “are similar to those taught
by Pereira.” Therefore, the examiner relies on Tesmann (id.), to teach “the use
of ethylene oxide with saturated or unsaturated fatty alcohols as thickners….”
The examiner relies on Turchini, as discussed supra, to teach that “surfactants
derived from esterification of citric acid and desired ethoxylated alcohols have
thickening properties.” Answer, pages 5-6.
In response, appellants argue (Brief, bridging sentence, pages 6-7), “to
assume that because the alcohol reactant of Pereira is similar to Appellant’s [sic]
claimed ether reactant, the viscosity of the resultant reaction product will be
similar is nothing more than just that, an assumption.” We agree. The examiner
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