Appeal No. 2001-2138
Application No. 08/403,276
evidence supported a prima facie case of obviousness. The broad proposition is thus
mere dicta, as it was unnecessary for the court’s decision.
In In re Anthony, 414 F.2d 1383, 162 USPQ 594 (CCPA 1969), Anthony conceded
a prima facie case of obviousness of the claims to d-and l-enantiomers over a prior art
teaching of the racemate. Id. at 1386, 162 USPQ at 596. Thus, the issue was not in
controversy, and the court’s statements, which are limited to reporting the course of
proceedings below, are dicta.
The examiner has not directed our attention to any evidence in the record that the
ordinary steroid chemist would have expected that the enantiomers of the RUS1
compounds would have affected spermazoid activity, as disclosed by Appellants, or that
the enantiomers would have any particular common pharmacological properties. Thus, the
examiner has not shown that RUS1 provides any suggestion to make or use the claimed
enantiomers. Accordingly, we reverse this rejection.
Appellants appear to urge that the failure of RUS1 to teach any utility for the claimed
compounds, and the known unpredictable nature of the changes in activity, toxicity, and
utility due to changes in chirality, require reversal of the examiner’s rejection. (Brief at 4.)
To the extent that Appellants intend to argue that the examiner has not established any
basis for concluding that one of ordinary skill in the art would have had a reasonable
expectation that the claimed compounds would have similar biological properties as the
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