Appeal No. 1999-1437
Application No. 08/732,065
We agree. What is missing from the examiner’s statements and evidence in
support of the rejection of the claim on appeal is a teaching or suggestion to be found in
the prior art which would have reasonably led those of ordinary skill in this art to the
claimed invention. Handa discloses a racemic mixture of an isobutylsuccinate which
corresponds to the claimed butanedioic ester of the claim and is also an intermediate in
the preparation of a final product. However, this final product is not the same as that
disclosed in the present application. The racemic mixture of isobutylsuccinate is disclosed
as being an intermediate in the preparation of certain hydroxylamine bearing amino acids
which are disclosed as useful as collagenase inhibitors. The examiner urges that Example
13 part (E) and (F) disclose the (R)-isomer of the claimed compound and “[o]ne would
clearly be motivated to prepare and use the optically active isomers of 4-tert.butyl
hydrogen 2-isobutylsuccinate to obtain the products having the same optically active
center.” However, the (R)-isomer disclosed in Example 13 is not derived by isolating it
from a racemic mixture, which might suggest the existence of the S-isomer isolated from
the (R)-isomer. The (R)-isomer is synthesized in a process wherein the starting material is
an (R)-isomer. (Column 15, lines 33-34). Further, the examiner has pointed to nothing in
Handa which would suggest the need or desire to produce any product which would
require the presence or use of an isolated (S)-isomer of the compound in question.
Thus, the examiner has pointed to no facts or provided any substantive evidence
which would have directed or led one of ordinary skill in this art to isolate this particular S-
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