Appeal No. 1997-1301
Application No. 08/079,310
The examiner has not presented any convincing evidence or
reasoning as to why the proposed substitution at the alpha
carbon of the benzyl group would facilitate the reaction set
forth in Scheme III of Reichmanis. The heterocyclic
intermediate in Scheme III of Reichmanis is formed by removal
of a hydrogen atom from the alpha carbon of the benzyl group
(page 398). The examiner has not explained or presented
reasoning why an electron-withdrawing group would not make
removal of this hydrogen more difficult, rather than
facilitate its removal (see the Reply Brief, page 10).
For the foregoing reasons and those presented in the
Reply Brief, we determine that the examiner has not
established a prima facie case of obviousness. In light of
this determination, we need not consider the sufficiency of
appellants’ evidence of unobviousness (e.g., the Houlihan
Declaration under 37 CFR
§ 1.132 dated Jan. 13, 1997, Paper No. 22). In re Geiger, 815
F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir. 1987).
Accordingly, the examiner’s rejection of claims 1-5 under
35 U.S.C. § 103 as unpatentable over Houlihan in view of
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