Appeal No. 1997-0481
Application No. 08/161,071
representative states “undersigned counsel represents he will personally appear on
October 10, 2000, at 9:00 a.m., to present oral arguments.” This panel
convened at 9:00 a.m. on October 10, 2000 to hear appellants’ oral argument,
however, appellants’ representative did not appear for this hearing. Accordingly,
our decision is based on appellants’ Brief.
THE REJECTION UNDER 35 U.S.C. § 103:
The initial burden of presenting a prima facie case of obviousness rests on
the examiner. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992). The examiner states (Answer, page 3) that “[i]t would have been
obvious to one of ordinary skill in the art to have used the reaction method
described by Eastwood et al. to obtain the 2’, 3’- dideoxy-2’, 3’-
didehydronucleoside of the instant invention.” We note that the Eastwood reference
makes no mention of the specific uracil compounds claimed by appellants. Thus, it
appears that while not expressly citing the authority, the examiner rests her prima
facie case of obviousness on In re Durden, 763 F.2d 1406, 1410, 226 USPQ 359,
361 (Fed. Cir. 1985).
These facts are similar to those found in In re Ochiai, 71 F.3d 1565, 37
USPQ2d 1127 (Fed. Cir. 1996). The Ochiai court summarized the Board’s position
that
[w]e are not here concerned with the patentability of the starting
materials, the final compounds or other processes of
6 Paper No. 66, received July 11, 2000.
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