And Appeal No 94-1146
Application 07/746,050
Actinomadura fulva subsp uruguayenis of this invention” (Chu,
p. 3; emphasis added). While Chu’s declaration of
unobviousness is itself supported by no more evidence than is
the examiner’s allegation of obviousness, it is the examiner
who has the initial burden to sustain his case. In our view,
the examiner’s case of obviousness under 35 U.S.C. § 103 in
view of the teaching of Japan 59-18035 is based on pure
speculation. Whether or not the motivation to synthesize
organic compounds is apparent from the prior art applied
against the claims in this case or debatable, the examiner
must also make the inquiries necessary to prima facie
establish that it would have been within the ordinary skill in
the art to synthesize the compounds sought without undue
experimentation, e.g., determine the unpredictability, level
of skill, and suitability of conventional methodology in the
art. The examiner has discussed none of the factors relevant
to the outcome-determinative issue in this case. In short,
the examiner appears to have rested his case of obviousness on
recognizing some motivation to synthesize the claimed
compounds. We repeat, standing alone motivation to synthesize
structurally similar compounds is not enough to sustain a case
of obviousness under
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