Appeal No 94-1046
Application 07/747,456
With respect to the synthesizing of the claimed
compound, note that the instant claims are not directed
to the process claims but to product claims. Further,
it would have been obvious to a person having ordinary
skill in the art at the time the instant invention was
made to prepare the claimed compound by removing the
sugar moiety of the reference’s compound by acid
hydrolysis and by reacting the resulting aglycone
with the desired sugar moiety.
While Chu’s declaration of unobviousness is itself supported
by no more evidence than is the examiner’s allegation of
obviousness, it is the examiner who has the initial burden to
sustain his case. In our view, the examiner’s case of
obviousness under 35 U.S.C. § 103 in view of the teaching of
Japan 59-18035 is purely speculative. Accordingly, we reverse
the rejection.
C. Obviousness-type double patenting
The provisional obviousness-type double patenting rejection
of Claims 1-9 in view of the subject matter of Claims 1-9 and 11
of Application 07/746,059 is hereby reversed. The rejection is
moot because the application appears to have been abandoned.
We reverse the examiner’s provisional obviousness-type
double patent rejection of Claims 1-9 in view of the subject
matter of Claims 1-12 of commonly assigned, copending Application
07/746,050. The examiner finds (Examiner’s Answer, p. 3, first
full paragraph):
. . . [T]he conflicting claims are not identical . . .
because the difference between the claimed compound and
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