Appeal No. 95-0885
Application 07/725,327
example, appellants draw the Board’s attention to the structural differences between
the elected species (see, e.g., claim 18) and the compounds discloses in Hindley. The
Hindley compounds are limited to primary and secondary amino compounds ...
Other than claim 18, appellants have not presented arguments in their brief specifically arguing the
separate patentability of any other dependent claim over the prior art as required by 37 CFR § § §
1.192(c)(5) and (c)(6)(iv) (1993). Accordingly, dependent claim 18 will stand or fall on its own and
dependent claims 2-7 and 9-17 will stand or fall independent claim 1. In re Nielson, 816 F.2d 1567,
1571, 2 USPQ2d 1525, 1527 (Fed. Cir. 1987); In re Wood, 582 F.2d 638, 642, 199 USPQ 137, 140
(CCPA 1978); Ex parte Schier, 21 USPQ2d 1016, 1081 ( Bd. Pat. App. & Int. 1991).
Opinion
We have carefully considered the respective positions advanced by appellants and the
examiner. For the reasons set forth below, we will affirm-in-part the examiner's rejection of the
appealed claims for obviousness under 35 U.S.C. § 103.
Appellants argue, with regard to claim 18, that the thiazolidine derivative claimed therein
includes a specie that is structurally distinct from the compounds of Hindley. Appellants point
to the fact that Hindley’s compounds are limited to primary and secondary amino compounds. In
response, the examiner asserts that
[a]ppellants argue for the first time that their active agents differ from the Hindley
compounds. This argument is not persuasive as there is no evidence of record which
establishes the unpredictability of the resulting effect. [Answer, p. 4.]
The burden is on the examiner to establish a prima facie case of obviousness, in this case establishing
that the claimed compounds would have been structurally obvious over Hindley’s compounds. It is
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