Appeal No. 95-3387
Application No. 08/005,942
Schwartz... teaches that both of these
compounds are natural products of the
same organism wherein the individual
components of the natural product are
separated from one another by methods
commonly employed in the art such as
fractionation, chromatography, etc.
Therefore, one having ordinary skill
in the art, at the time of the invention,
would therefore be apprised of how to
make a compound from a natural product
containing either a non-methylated
hydroxy Pro or methylated hydroxy Pro
by employing procedures clearly known
in the art of separating individual
components from antibiotics of the type
presently claimed.
It is clear from the examiner's discussion of this publication
that it forms part of the evidence in support of a holding
that
any or all of the claims would have been obvious. As the
court
stated in In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406,
407 n.3 (CCPA 1970):
Appellant complains that although neither of
[the newly cited references] is mentioned in
the statement of either of the appealed
rejections and although this fact was pointed
out in appellant's brief below, the board
approved of their use by the examiner "as
suggesting that [appellant's] compounds would
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