Ex parte BUENDIA et al. - Page 5




                 Appeal No. 1997-1767                                                                                                                   
                 Application No. 08/442,959                                                                                                             


                          Claims 11 and 12 stand rejected under 35 U.S.C.  102(b)                                                                      
                 as anticipated by CA ‘389; and                                                                                                         
                          Claims 11 and 12 stand rejected under 35 U.S.C.  103(a)                                                                      
                 as unpatentable over CA ‘566.                                                                                                          
                          We have carefully reviewed the entire record, including                                                                       
                 all of the arguments and evidence presented by the examiner                                                                            
                 and by the appellants.  Our review leads us to conclude that                                                                           
                 the aforementioned rejections are not well founded.                                                                                    
                 Accordingly, we reverse.2                                                                                                              

                                                                     OPINION                                                                            
                          We consider first the examiner’s rejection under 35                                                                           
                 U.S.C.                                                                                                                                 
                  102(b) over CA ‘389.  The examiner states that CA ‘389                                                                               
                 discloses “the keto form” of the appellants’ claimed compound                                                                          
                 (answer, page 3).  According to the examiner, “the enol form”                                                                          
                 (i.e., the appellants’ claimed compound) exists inherently                                                                             




                          2We hasten to point out that our decision is confined to                                                                      
                 the rejections based solely on the teachings of CA ‘389 and                                                                            
                 CA ‘566, not the underlying patent documents identified                                                                                
                 therein.                                                                                                                               
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