Appeal No 94-1046
Application 07/747,456
The examiner does not explain why the data on page 14 of
the specification does not represent the structural formula
depicted in Claim 1 as Puar declares and does not constitute
objective evidence that appellants invented the subject matter of
Claim 1 at the time their application was originally filed. We
can speculate why the examiner maintained the rejection, but we
decline to do so.
Decisions by the Board are based on sound reasoning
supported by evidence. Absent some reasonable explanation by the
examiner as to why the data on page 14, especially data which the
art of qualitative analysis recognizes as being capable of
distinguishing isomers (compare the data reported in Tables II
and III of the specification, pp. 14 and 16 respectively, and
Table IV, p. 17), does not correspond to formula 1 of Claim 1,
we reverse the examiner’s rejection.
B. Obviousness under Section 103
The examiner has the initial burden of making out a case
for obviousness under 35 U.S.C. § 103. The examiner’s case for
obviousness is supported by the following arguments (Examiner’s
Answer, p. 4):
The Japanese patent discloses a closely analogous
antibiotic having the molecular formula of C H N O .
2528 25
The only difference between the claimed compound and
the reference’s compound is a position of a hydroxy
group at the 4'-position. Since the claimed compound
is a position isomer of the reference’s compound and
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