Appeal No. 2004-0351
Application No. 09/463,277
equatorial conformation. Nevertheless, whatever support this
point may provide to the examiner’s position is undermined by
Krijnen’s express teaching that an axial conformation is
preferred (at least in the solid state) in compound 4 of figure
3. See the first full paragraph in the right hand column on page
4435 of Krijnen.
Second, even assuming the examiner’s analysis of Krijnen’s
teachings is correct, it is unclear from this record whether
these teachings would have suggested modifying the 2(MFP)
compound of Verhey in the manner proposed by the examiner. This
is because, as correctly indicated by the appellants, this
compound of Verhey is not similar to the compounds studied by
Krijnen (e.g., see Verhey’s 2(MFP) compound on page 810 in
comparison with Krijnen’s compounds shown in Chart II on page
4434). The record before us contains no support for the
proposition that the artisan would have modified the former
compound as proposed by the examiner based on Krijnen’s teachings
regarding his dissimilar compounds.
We here emphasize that a prima facie case of obviousness
under Section 103 requires a suggestion to modify in combination
with a reasonable expectation that the proposed modification
would be successful. See In re O’Farrell, 853 F.2d 894, 903-04,
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