Ex parte BUENDIA et al. - Page 8




                 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).                                                                                                             
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