Appeal No. 98-1591
Application 08/417,625
identified as an antibiotic, one of ordinary skill in the art
would have been motivated to purify it because purification of
prior art known compounds is well within the capabilities of
the skilled artisan (answer, page 4). This argument is
deficient in that the examiner has not established that it was
known in the art that clavulanic acid and potassium
clavulanate are antibiotics. The identification as an
antibiotic referred to by the examiner appears to be that
carried out by appellants. Hence, the record indicates that
in making the rejection, the examiner relied upon
impermissible hindsight based on appellants’ specification.
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, do not sustain the examiner’s rejection of claims
38 and 39 under 35 U.S.C. § 103.
DECISION
The provisional rejections of claims 36, 37 and 41-45
under the judicially created doctrine of obviousness-type
double patenting over claims 35 and 36 of copending
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