Appeal No. 95-2879
Application 08/085,657
structurally similar to the compound described in
representative claim 1. Answer, p. 4, para. 2. The examiner
states that DN ‘622 and McLamore “show the equivalence of
alkyl and phenyl group for the structurally similar
compounds.” Id., para. 3. The examiner notes that compounds
of GB ‘885 and DN ‘622 are useful for lowering blood sugar
levels. Id., para. 2 and 3. The examiner concludes that
[i]t would have been prima facie obvious to
one of ordinary skill in the art at the time the
invention was made to modify ‘885 by introducing
phenyl or substituted phenyl group for the alkyl
group as taught by NR 93622 [DN ‘622] and
McLamore because the secondary references
clearly teach the equivalence of alkyl and aryl
groups in the structurally similar compounds,
with the reasonable expectation of achieving a
successful antidiabetic composition, absent
evidence to the contrary [Answer, p. 5, para.
1].
We find this position untenable.
It cannot be gainsaid that the examiner has the burden
under § 103 to establish a prima facie case of obviousness.
In re Fine, 837 F.2d 1071, 1074-76, 5 USPQ2d 1595, 1598-
1600 (Fed. Cir.
1988); In re Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785,
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