Appeal No. 2006-2378 Page 9
Application No. 10/433,388
Declaration, ¶ 25 (received November 2, 2005), pages 7-8. Rather than assessing the
merits of this seemingly plausible argument, the examiner responds by stating that
“appellants are reminded of Ex parte Rubin, and inasmuch as appellants have not
submitted side by side comparison, no unexpected results have been noted.” Answer,
page 5.
Thus, the examiner appears to consider the decision in Rubin to be dispositive of
the issue of obviousness, with no further analysis of arguments or evidence being
required. However, as made clear in Ochiai, the examiner must fully consider all of the
facts relevant to the obviousness of the claims. The examiner’s reliance on precedent
in establishing a prima facie case of obviousness does not absolve him of the
responsibility of considering all of the facts and argument relevant to the obviousness of
the claims.
The examiner also cited Nordal in support of the obviousness rejection to
demonstrate that the step of iodinating compounds of formula (I) was “old in the art.”
Answer, page 4. However, in our view, Nordal supports Appellants’ argument more
than the obviousness rejection.
We agree that Nordal discloses that the compounds of formula (I) can be
iodinated in the manner recited in Appellants’ claims 9 and 10. Nordal, columns 7 and
8, at lines 15-60; see also column 11, lines 31-57. However, Nordal also discloses
making the compounds of formula (I) by first amidating the ester groups of a 5-nitro-1,3-
benzenedicarboxylic acid methyl ester, and then reducing the nitro group to an amine.
Id.; see also column 10, line 56, through column 11, line 57. Nordal discloses that “this
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