Appeal No. 1997-2795
Application No. 08/438,933
Although the examiner argues that “inherency can also play a role in a rejection under
§ 103" (answer, page 14), it is well established that inherency and obviousness are different concepts.
In re Shetty, 566 F.2d 81, 86, 195 USPQ 753, 756 (CCPA 1977) (“inherency is quite immaterial if ...
one of ordinary skill in the art would not appreciate or recognize that inherent result.”); In re
Spormann, 363 F.2d 444, 448, 150 USPQ 449, 452 (CCPA 1966) (“the inherency of an advantage
and its obviousness are entirely different questions. That which may be inherent is not necessarily
known. Obviousness cannot be predicated on what is unknown.”). A conclusion of obviousness must
be based on evidence, not unsupported arguments.
Based on the foregoing, we conclude that the examiner has not established that claims 12 and
17 are prima facie anticipated by or, in the alternative, prima facie obvious over any one of Naggi
‘063, Naggi ‘881 or Petitou. Having concluded that the examiner has not established a prima
facie case of anticipation or obviousness, we do not reach appellants’ discussion of rebuttal evidence
on pages 7-8, 12 and 14 of the brief.
III. Rejection of claims 13-16 under 35 U.S.C. § 103 as being unpatentable over either Fransson
(M) or Casu
Claims 13-16 are directed to methods of preparing heparin derivatives from porcine (claims 14
and 16) or bovine (claims 13 and 15) heparin starting material sequentially comprising (a) periodate
oxidation at pH 4-5 at 0-10EC in the dark, (b) partial alkali depolymerization, (c) sodium borohydride
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