Appeal No. 1998-0900
Application No. 08/290,047
The examiner does not offer an explanation as to how claim 1 directed to
"Polymerisable enantiomers of optically active dipeptides" should be read as a
composition which include mixtures of various optically active compounds. However,
our reading of Wagner would suggest that this question is not relevant to the outcome
of this aspect of the appeal.
Basic to the examiner's position is that one of ordinary skill in this art would
recognize the presence of an asymmetric carbon as indicating the existence of optical
active isomers of the prior art dipeptides. However, as appellants point out, the
disclosed compounds of Wagner, on which the examiner relies (Answer, page 10), do
not exhibit asymmetric carbons. Both carbons, which are asymmetric in the claimed
compounds, are described as methylene (CH2) by Wagner. (Brief, pages 4-5). Thus,
there is nothing about this portion of Wagner which would suggest optically active
isomers, and the examiner has provided no evidence which would reasonably suggest
the modification of the dipeptides of Wagner in a manner to arrive at the claimed
invention.
On this record, we find that the examiner has failed to provided evidence which
would reasonably established that the claimed subject matter would have been prima
facie obvious within the meaning of 35 U.S.C. § 103 at the time of the invention. The
examiner's rejection of the claims is fatally defective since it does not properly account
for and establish the obviousness of the subject matter as a whole. Where the
examiner fails to establish a prima facie case, the rejection is improper and will be
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