Appeal No. 1996-1959
Application No. 07/946,546
As stated in Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628,
631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987), “[a] claim is anticipated only if each
and every element as set forth in the claim is found, either expressly or inherently
described, in a single prior art reference.” In addition, “…elements must be
arranged as required by the claim” (In re Bond, 910 F.2d 831, 832,
15 USPQ2d 1566, 1567 (Fed. Cir. 1990). That is not the case here. On the
contrary, the Examiner has not established that Schreiner or Schrell teaches the
same compound recited in claim 6. The Examiner has not established a prima
facie case of anticipation and, accordingly, the rejection of claim 6 under
35 U.S.C. § 102(b) as described by either Schreiner or Schrell is reversed.
Obviousness
The Examiner rejected claims 3-6, 10-14 and 16 under 35 U.S.C.
§ 103(a) over the combination of Schreiner and Schrell:
Schreiner et al show the acid form of the compound designated
Formula VIII in instant claim 6 and instant claim 10…Schreiner et al also
show a comparable method for the synthesis of the ketoaldonic acids. Note
page 581-583. Further, Schreiner et al teach a method for the preparation of
nonulosonic acid. Note pages 581 and 583. Thus, Schreiner et al
substantially teach the present invention except for showing each compound
and process step claimed…Regarding the compounds designated as
Formulae V, VI, VII and IX described in instant claims 3-5 and 16, Schrell et
al show closely analogous compounds that can contain suitable substituents,
viz., “Ac”….With respect to instant process claims 11-15, Schrell et al show
comparable process or method steps for the synthesis of closely analogous
ketoaldonic acid compounds…Therefore it would have been obvious…to
provide the ketoaldonic acid compounds described in the present invention
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