Appeal No. 1996-2910
Application 07/825,488
forms of the compounds . . . are naturally intended to be embraced within the scope of
the invention.”
Claim 25 is directed to “[a] composition consisting essentially of” the RSSS
stereoisomer of ","’-[iminobismethylene]bis[6-fluoro-3,4-dihydro-2H-1-benzopyran-2-
methanol], while claim 26 is directed to “[a] pharmaceutical composition consisting
essentially of” a combination of the RSSS stereoisomer and its enantiomer, SRRR.
The examiner’s statement of the rejection is as follows:
Van Lommen et al and Van de Water et al teach the claim designated
compounds as old, well known and in combination with various carriers
and excipients as useful for the claimed utility. This teaching includes all
position isomers inherent in the claimed compound. The skilled artisan
would have known that various isomers would exhibit biological activity at
various levels. . . [T]he skilled artisan would have seen optical isomer
separation as a routine procedure leading to the compounds claimed
herein . . . such artisan would have expected the various biological activity
levels set forth herein. It would follow therefore that the instant claims
recite prima facie obvious subject matter and are properly rejected under
35 USC 103. (Final Rejection, page 3.)
For purposes of this appeal we accept, without deciding, that the examiner has
established a prima facie case of obviousness against claims 21, 22 and 24 through 26.
Nevertheless, a conclusion of prima facie obviousness does not end a patentability
determination under 35 U.S.C. § 103. As stated in In re Hedges, 783 F.2d 1038, 1039,
228 USPQ 685, 686 (Fed. Cir. 1986):
If a prima facie case is made in the first instance, and if the applicant
comes forward with reasonable rebuttal, whether buttressed by
experiment, prior art references, or argument, the entire merits of the
matter are to be reweighed. (Citations omitted).
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