Ex parte Sasajima, 212 USPQ 103, 104 (POBA 1981). In the present case, we view
the relative stability of a compound as a property that is ordinarily not separable
from its disclosed use as a pharmaceutical. Moreover, we determine that the amount
of degradant obtained as a result of compound instability is significantly more
important than the identity of the degradant. Since we find the stability of the claimed
compound to be unusual and unexpected based upon this record, any prima facie case
of obviousness established by the examiner is rebutted and the rejection cannot stand.
For the above reasons, we conclude, evaluating the examiner’s prima facie case
of obviousness, if any in view of appellants’ evidence and arguments, that based on the
totality of the record before us, the preponderance of evidence weighs in favor of
non-obviousness within the meaning of § 103. In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
DECISION
The rejection of claim 7 under 35 U.S.C. § 103 as being unpatentable over Rees
alone or in view of Merck is reversed.
The rejection of claim 7 under 35 U.S.C. § 103 as being unpatentable over
Temple alone or in view of Merck is reversed.
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