Appeal No. 1996-2042
Application No. 08/086,602
appellants’ argument that there may be either one or two R1
substituents on the ring of the prior art formula I compounds.
See the attached translation of Kohl at the top of page 4.
Thus, the examiner’s determination that formula I of Kohl only
covers twenty eight compounds was factually erroneous. As
appellants observe, formula I of Kohl appears to cover at
least 196 possible compounds. See the reply brief at page 3.
Both the question of what a prior art reference teaches
and the question of anticipation under section 102(b) of the
statute are factual determinations. See In re Graves, 69 F.3d
1147, 1151, 36 USPQ 2d 1697, 1700 (Fed. Cir. 1995). Here, the
examiner’s factual determination of what Kohl teaches was
erroneous. It logically follows under the circumstances of
this case that the examiner’s rejection of appealed claim 12
as anticipated by Kohl cannot be sustained. The decision of
the examiner is reversed.
In light of our disposition of anticipation rejection,
the examiner should reconsider the propriety of a rejection of
appealed claim 12 under 35 U.S.C. § 103 over Kohl. Compare
the last line of the answer at page 5. The numerous
declarations of record purportedly showing unexpected results
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