Appeal No. 94-4265
Application 08/035,915
prior art as to the interchangeability of oxygen and methylene and the fact that
substitution had produced compounds of similar and sometimes improved activity.
We do not find in the record before us that the examiner has established that sulfur and
methylene in the Oida III compounds are isosteres. Drawing a conclusion from the Mead case that
sulfur and methylene are isosteres because evidence in Mead led the judge to conclude that oxygen
and methylene are isosteres for compounds such as nylidrin and isoxsuprine without any further
evidence is pure speculation. The examiner has not presented any evidence that sulfur and methylene
isosterism is known in the art for the claimed compounds and that such interchange would have been
considered to be within the skill of the art. The court in the Mead case based its decision on
isosterism on evidence. Here the examiner has provided no such evidence. The examiner is in error
in relying on the Mead case to establish isosterism rather than presenting scientific reasoning to show
that Oida III’s and appellants’ compounds are isosteric compounds. In re Brouwer, 77 F.3d 422,
425, 37 USPQ2d 1663, 1666 (Fed. Cir. 1996). Furthermore, the examiner’s reliance in this case on
In re Durden, 763 F.2d 1406, 226 USPQ 359 (Fed. Cir. 1985) and In re Albertson, 332 F.2d 379,
141 USPQ 730 (CCPA 1964) to support a conclusion of obviousness is also misplaced. See In re
Ochiai, 71 F.3d 1565, 1569-1572, 37 USPQ2d 1127, 1131-1133 (Fed. Cir. 1995). For these
reasons, we will not sustain the rejection of any of the claims over Oida III alone.
The examiner rejected all of the claims as being unpatentable under 35 U.S.C. § 103 over EP
45198 alone. The reference is directed to preparing carba-2-penem compounds having formula (XII)
made in accordance with the following reaction mechanism:
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