Appeal No. 1997-3586
Application No. 08/240,811
Lacking in the present record is any testimony of
one possessing skill in the relevant art which
establishes that appellants' finding that the
claimed catalyst produces stereoisomers of the
products disclosed by Jackson would have been
unexpected. . . . Furthermore, appellants have not
demonstrated that the different enantiomer produced
by the claimed catalyst is of significance and of
practical advantage in the art. In re D'Ancicco,
439 F.2d 1244, 169 USPQ 303 (CCPA 1971). Simply
put, the argument of appellants' counsel that the
property of the claimed catalyst is unexpected is no
substitute for factual objective evidence
establishing such. In re DeBlauwe, 736 F.2d 699,
222 USPQ 191 (Fed. Cir. 1984); In re Pearson, 494
F.2d 1399, 181 USPQ 641 (CCPA 1974).
Also, regarding the method claims that are now again before
us, the Board stated at page 5 of the decision that "it is
incumbent upon appellants to present objective evidence of
unexpected results to rebut the prima facie case of
obviousness."
In essence, we find that appellants have met their burden
of coming forward with objective evidence of nonobviousness
for the claimed method on appeal. The Declaration and
Supplemental Declaration of Dr. Gohfu Susukamo present
credible evidence that one of ordinary skill in the art, based
on the disclosure of Jackson, would not have expected that
cyclo-[(S)-leu-(S)-his] would catalyze the formation of (S)-
cyanohydrins, as presently claimed. While the examiner states
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