Appeal No. 2003-2023
Application 09/581,440
latter drawn to perfluorobutyl methyl ether and a somewhat similar recitation of organic solvents
for the formation of azeotrope-like compositions but without disclosure of esters containing
4 carbon atoms, that is, acetate and propionate esters (cf. Flynn ‘812, col. 5, line 66, to col. 6,
line 38, with Flynn ‘595, col. 5, lines 45-63), would also have made the substitution of the
methyl ether for ethyl ether obvious (Paper No. 11, page 5; answer, pages 3-5).
Appellants submit that the examiner’s position is based on hindsight because there is no
disclosure of an azeotrope-like composition containing perfluorobutyl methyl ether and an ester
in Flynn ‘812, pointing out that esters are disclosed in this reference only as suitable alkylating
agents at col. 4, lines 32-44, and the listing of suitable solvents in Flynn ‘812 differs in this and
other respects from the listing of solvents in Flynn ‘595 (brief, pages 8-11). Thus, appellants
argue that the fact that ester solvents are shown by Flynn ‘595 to be useful in forming azeotrope-
like compositions with perfluorobutyl ethyl ethers does not suggest modifying the teachings of
azeotrope-like compositions containing perfluorobutyl methyl ethers of Flynn ‘812 to include
ethyl acetate (id., pages 11-12).
On this record, we agree with appellants. In order to establish a prima facie case of
structural obviousness on this record, the examiner must establish by scientific reasoning and/or
objective evidence that adjacent members of the perfluorobutyl ether series would have been
expected by one of ordinary skill in the art to have similar properties with respect to azeotrope-
like compositions in view of the teachings of the Flynn references. In this respect, we find no
evidence advanced by the examiner other than the alleged general similarity between “methyl”
and “ethyl” per se, and indeed, such a general statement alone does not provide the requisite
evidence necessary to establish this position in view of the formation of azeotrope-like
compositions with different sets of organic solvents for the perfluorobutyl methyl and ethyl
ethers as disclosed by the respective Flynn references, wherein there is no disclosure of the
formation of azeotrope-like composition with the perfluorobutyl methyl ether and esters
containing 4 carbon atoms in Flynn ‘292. See generally, In re Jones, 958 F.2d 347, 349-51,
21 USPQ2d 1941, 1943-44 (Fed. Cir. 1992) (“Conspicuously missing from this record is any
evidence, other than the PTO’s speculation (if it be called evidence) that one of ordinary skill in
the part of this person. In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985).
- 5 -
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007