Appeal No. 1997-1767
Application No. 08/442,959
has not provided the requisite factual basis upon which to
assert that the enol form would necessarily be present in the
keto-containing compound described in CA ‘389.
Since the examiner has not met her initial burden of
establishing a prima facie case of unpatentability, we cannot 3
sustain the examiner’s rejection of claims 11 and 12 under
35 U.S.C. § 102(b). It follows then that we need not consider
the sufficiency of the declaration of Dr. Catherine Lang filed
June 11, 1996.
The examiner’s rejection of claims 11 and 12 under 35
U.S.C. § 103(a) as unpatentable over CA ‘566 is reversible for
reasons analogous to those discussed above. Again, the
examiner has taken the position that CA ‘566 “discloses the
keto form of the instant compound” and that the enol form 4
would exist inherently together with the keto compound
(answer, page 4).
3 See, e.g., In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992).
4The examiner also acknowledges that the compound
described in CA ‘566 differs from the appellants’ claimed
compound in the presence of chlorine at the “C-7” [sic, 6]
position (answer, page 4).
8
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