Appeal No. 94-0820
Application 07/772,830
analogous compounds teach numerous ring system
[sic, systems] including that of Misra and the
claims. It would be [sic, would have been]
obvious to one skilled [sic, one of ordinary
skill] in the art to substitute the ring system of
Misra with one of the prior art and obtain the
desired results {Answer, para. bridging pp. 2-3].
We find the examiner’s position untenable.
As we understand the rejection, the examiner is urging that
the R -C-C-R moiety of the claimed compound is merely a “bridge”
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and, therefore, its presence does not affect the biological
properties of the compound. However, in reviewing the
references, we do not find any teachings with respect to the
referenced moiety acting a “bridge,” nor have any such teachings
been pointed out by the examiner. Thus, it is difficult for us
to discern on what basis the examiner reached his conclusion.
Accordingly, on this record, we find that the examiner has not
established, through the use of factual evidence, or sound
scientific reasoning, that the combined limitations would have
been obvious to one of ordinary skill in the art at the time
the application was filed. A conclusion of obviousness must be
based on facts, and not unsupported generalities. In re Freed,
425 F.2d 785, 788, 165 USPQ 570, 572 (CCPA 1970); In re Warner,
379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967).
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