Appeal No. 95-0777
Application 07/756,411
The examiner concludes that “preparing the claimed invention
is considered to be within the purview of the skilled artisan
because hydroxylation of the compound disclosed by Carter (II)
would yield the claimed compound” (answer, page 11). The
examiner further concludes that “[A]ssuming arguendo, that this
synthetic route is not feasible the method of preparing
appellant’s compound does not impart patentability to the
compounds because both the claimed and prior art compounds are
obtained by the fermentation of the same Streptomyces lydicus
sp.” (answer, page 11). The examiner has not established that,
at the time appellants' invention was made, the prior art
disclosed or rendered obvious a method for making the claimed
compound (either chemically or by fermentation). As seen from
Hoeksema, the method of preparation is essential if the reference
is relied upon to support a rejection under section 103.
The examiner argues that isolation and purification
techniques are considered “to be within the purview of the
skilled artisan” and that Carter II teaches the purification and
isolation of the alpha and beta compounds (answer, page 11).
However, Carter II does not teach or suggest the further
isolation and purification to produce the Gamma compound as per
appellants’ procedure on page 13 of the specification. Carter
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