Appeal No. 1998-0900
Application No. 08/290,047
overturned. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir.1988).
Therefore, we reversed the rejection of claims 1 - 4, 15, and 16 under 35 U.S.C. § 103
as unpatentable of the combined teachings of Wagner, Heilmann, and Ishii.
Having determined that the examiner failed to establish a prima facie case of
obviousness within the meaning of 35 U.S.C. § 103, we found it unnecessary to
consider the declarations submitted by appellants.
Statement under 37 CFR 1.196(c)
In affirming the rejection of the appealed claims under 35 U.S.C. § 112, first and
second paragraph, we note that the phrase "substantially free of other enantiomers" did
not appear in the original claims presented in this application, but was added by the
amendment filed May 19, 1995 (Paper No. 16) to address the question of purity
associated with rejections under 35 U.S.C. § 103. Further, we note the statement by
appellants which indicate a willingness to delete "substantially free of other
enantiomers" in order to avoid this rejection. (Brief, page 18). The cancellation of this
phrase would avoid this rejection of the claims under 35 U.S.C. § 112. Therefore,
under the provisions of 37 CFR § 1.196(c), we authorize the amendment of claim 1
consistent with appellants' proffer to remove the noted phrase.
Summary
The rejection of claims 1 - 4,15, and 16 under 35 U.S.C. § 112, first and second
paragraphs, is affirmed. The rejection of claims 1 - 3 under 35 U.S.C. § 112, second
paragraph, is reversed. The rejection of claims 1 - 4, 15, and 16 under 35 U.S.C. § 103
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