Ex parte Yagihashi et al.

Board of Patent Appeals and Interferences

Mar 28, 2000

08294214 (B.P.A.I. Mar. 28, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte FUJIO YAGIHASHI
and MINORU TAKAMIZAWA
__________
Appeal No. 1997-2270
Application 08/294,214
___________
ON BRIEF
___________
Before KIMLIN, OWENS and KRATZ, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s final rejection of
claims 1 and 5-9, which are all of the claims remaining in the
application.
THE INVENTION
Appellants claim a bisphenol derivative which, appellants
Appeal No. 1997-2270
Application 08/294,214

Our consideration of this reference is based upon an1
English translation thereof, a copy of which is provided to
appellants with this decision.
2
state (specification, pages 1 and 4), is useful as an
intermediate in the synthesis of compounds and as an indicator
of hydrogen ion concentration.
Claim 1 is illustrative and
reads as follows:
1. A bisphenol compound
of the following formula:
where each R is a lower alkyl group, tetrahydropyranyl,
methoxymethyl or trialkylsilyl group, and each of the benzene
rings in the formula are optionally substituted by a lower
alkyl group.
THE REFERENCES
Fukui et al. (JP ‘473) 02-311473 Dec. 27,1
1990
(Japanese Kokai)
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Theodora W. Greene and Peter G.M. Watts (Greene), Protective
Groups in Organic Synthesis 413 (John Wiley & Sons 1991).
THE REJECTION
Claims 1 and 5-9 stand rejected under 35 U.S.C. § 103 as
being unpatentable over appellants’ acknowledged prior art in
view of JP ‘473 and Greene.
OPINION
We have carefully considered all of the arguments
advanced by appellants and the examiner and agree with
appellants that the aforementioned rejection is not well
founded. Accordingly, we reverse this rejection.
Appellants acknowledge that at the time of their
invention a bisphenol derivative was known in the art which
differed from appellants’ claimed compound only in that the
substituents on the phenyl rings were unprotected hydroxyl
groups rather than appellants’ protected hydroxyl (i.e., -OR)
substituents (specification, page 1).
Green discloses that the protecting groups recited in
appellants’ claim 1 were known in the art at the time of
appellants’ invention (page 413). Green does not disclose a
method of adding these protecting groups to compounds.
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JP ‘473 discloses fused lactones wherein a group can be
either hydroxyl or a protected hydroxyl, and discloses a
method for protecting the hydroxyl groups of the fused
lactones (pages 2 and 15).
The examiner argues that “[i]t would have been prima
facie obvious at the time the claimed invention was made to
protect the hydroxy groups of the prior art by using the
conventional hydroxy groups as taught by Japanese patent J 02-
311473 and Greene et al. to form the protected prior art
compounds without the loss of the same activity” (answer, page
3). For the following reasons, the examiner’s argument is not
persuasive.
First, as argued by appellants (brief, pages 4-5), the
examiner has not explained why the applied prior art would
have motivated one of ordinary skill in the art to use
protecting groups for the hydroxyl groups of the prior art
bisphenol derivative. Appellants argue that the fused
lactones of JP ‘473 are not structurally similar to
appellants’ claimed compound (brief, page 5), and the examiner
does not challenge this argument. Also, the examiner has not
established that the mere knowledge that the protecting groups
Appeal No. 1997-2270
Application 08/294,214

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disclosed by Green were known in the art would have led one of
ordinary skill in the art to use these groups as protecting
groups for the admitted prior art bisphenol derivative.
Second, even if one of ordinary skill in the art desired
to use appellants’ protecting groups to protect the hydroxyl
groups of the acknowledged prior art bisphenol derivative, the
examiner has not established that such a person would have had
a reasonable expectation of success in doing so. See In re
Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir.
1991); In re O’Farrell, 853 F.2d 894, 902, 7 USPQ2d 1673, 1680
(Fed. Cir. 1988). Appellants provide a declaration by Fujio
Yagihashi (filed January 23, 1996, attachment to paper no. 5)
which shows that when an attempt was made to use the method of
JP ‘473 to add protecting groups to the hydroxyl groups of the
admitted prior art bisphenol derivative, the method was not
successful. The examiner argues that the reason why the
experiment in the declaration failed was that a successful
process, such as appellants’ process, was not used (answer,
page 4). The examiner, however, has provided no evidence that
the process used by appellants was known in the art at the
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time of appellants’ invention, or that any other process was
known in the art at that time which would have been effective
for protecting the hydroxyl groups of the admitted prior art
bisphenol derivative.
For the above reasons, we find that the examiner has not
set forth a factual basis which is sufficient for supporting a
conclusion of obviousness of the invention recited in any of
appellants’ claims. Consequently, we reverse the examiner’s
rejection.
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Application 08/294,214

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DECISION
The rejection of claims 1 and 5-9 under 35 U.S.C. § 103
over appellants’ acknowledged prior art in view of JP ‘473 and
Greene is reversed.
REVERSED
)
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
TERRY J. OWENS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
PETER F. KRATZ )
Administrative Patent Judge )
Appeal No. 1997-2270
Application 08/294,214

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