Appeal No. 98-1486
Application 08/417,628
been motivated to isolate them in solid form. The record
indicates that the motivation relied upon by the examiner
comes solely from appellants' specification. Hence, the
examiner used
impermissible hindsight when rejecting the claims. 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).
Appellants argue that any clavulanic acid present in
Lilly’s fermentation broth would have been in solution and not
in solid or crystalline form (brief, page 23). The examiner
has not responded to appellants’ argument, and it is not
apparent from the record why any salts of clavulanic acid
which are present in Lilly’s fermentation broth would be in
solid or crystalline form.
For the above reasons, we do not sustain the examiner’s
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