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” 3 4 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). 3Page: Previous 1 2 3 4 5 6 NextLast modified: November 3, 2007