Appeal No. 2001-2300
Application No. 09/152,595
The examiner relies on the following reference as evidence
of unpatentability:
Pews et al. (Pews) 4,937,396 Jun. 26, 1990
Claims 2-7 and 9-11 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Pews.
We reverse the examiner’s rejection for the following
reasons.
OPINION
The examiner’s position is that Pews discloses the
instantly claimed process “except for the use of an analogous
starting material”. The examiner states that the result
obtained by appellants, namely the replacement of the chloro
substituents with fluorine, is what one of ordinary skill in the
art would have expected. The examiner also states that “[t]he
motivation to use the instantly claimed starting material in the
prior art process is derived from the fact that it is a known
compound and there would have been a reasonable expectation of
obtaining the corresponding known useful product”. (answer, page
3).
On page 5 of the brief, appellants argue that Pews uses a
different starting material, and state that the examiner
acknowledges that the starting material of appellants’ invention
differs from that of Pews.
Hence, the issue in the instant case is whether it would
have been obvious to change the starting material of Pews to the
starting material claimed by appellants.
We note that the initial burden of presenting a prima facie
case of unpatentability on any ground rests with the examiner.
See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
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