Appeal No. 1995-5117
Application No. 08/067,154
6) overlap those defined by the formula recited by independent
claims 10 and 15. It is true that the substituent choices
offered by patentee for his formula IIc are larger in scope
than those offered by the appellants via independent claims 10
and 15. Nevertheless, as explained previously, each of the
choices offered by Weber would have been obvious to an artisan
with ordinary skill. Merck & Co. v. Biocraft Labs., Inc., id.
Moreover, as also previously explained, the mere fact that the
claims under consideration recite characteristics or
properties not appreciated by Weber does not forestall a
conclusion of prima facie obviousness. In re May, id. and In
re Spada, id.
For these reasons, we conclude that the Weber reference
evidence adduced by the examiner establishes a prima facie
case of obviousness with respect to the here rejected claims.
In rebuttal of this prima facie case, the appellants proffer
the Rieger declaration of record as evidence of unexpected
results. In this declaration, at least one inventive compound
is compared with a number of other compounds including 4
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007