Appeal No. 98-0573
Application 08/418,055
appellants’ claims (answer, page 4).
This argument is not persuasive because the examiner has
not established that those of ordinary skill in the art were
aware that clavulanic acid or the salts thereof recited in
appellants’ claims were known in the art to be to be among the
“other antibiotic substances” mentioned in Lilly or to have
any other
use. Thus, it is not apparent from the record why one of
ordinary skill in the art would have been motivated to purify
these compounds. The record indicates that the motivation
relied on by the examiner for purifying clavulanic acid or its
salts comes solely from appellants’ specification. Hence, the
examiner’s rejection is based on impermissible hindsight. See
W.L. Gore & Associates v. Garlock, Inc., 721 F.2d 1540, 1553,
220 USPQ 303, 312-13 (Fed. Cir. 1983); In re Rothermel, 276
F.2d 393, 396, 125 USPQ 328, 331 (CCPA 1960). Accordingly, we
do not sustain the rejection under 35 U.S.C. § 103.
DECISION
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