Appeal No. 1998-0529
Application No. 07/961,076
substitution would have had a reasonable expectation of success. The recycling step of
the secondary references require the presence of a synthetase which serves as a catalyst
for the reaction between sialic acid and CMP. The examiner has provided no evidence
which would demonstrate that the synthetase useful for generating CMP-sialic acid in situ
in the processes described by Wong, Ichikawa (I) and Ichikawa (II) would function in a
similar manner to produce the required nucleoside 5'-diphospho-fucose in situ in the
process of Gokhale. The prior art, relied on by the examiner, does not establish, or even
suggest, that nucleoside 5'-diphospho-fucose can be generated in this manner. We note
that Gokhale uses a chemical synthesis to produce the necessary nucleoside 5'-phospho-
fucose (Gokhale, page 1068, col. 2, second paragraph through page 1069, col. 1). Thus,
we find nothing in the references relied on by the examiner which would have directed one
of ordinary skill in this art, at the time of the invention, to those conditions and ingredients
which would have permitted the in situ regeneration of nucleoside 5'-phospho-fucose in the
process described by Gokhale.
The initial burden of presenting a prima facie case of obviousness rests on the
examiner. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
On these circumstances, we are constrained to conclude that the examiner has failed to
provide the evidence necessary to support a prima facie case of obviousness as to a
method of producing fucosylated carbohydrates in a single reaction mixture as presently
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