Appeal No. 1998-1245
Application No. 08/111,831
VanRollins et al. (VanRollins II), "Synthesis of epoxide and vicinal diol regioisomers from
docosahexaenoate methy esters," HCAPLUS, Abstract No. 1989:457336 (1989)
Grounds of Rejection
Claims 8 - 9 stand rejected under 35 U.S.C. § 103. As evidence of obviousness,
the examiner relies upon Kimura I.
Claims 10 - 13 stand rejected under 35 U.S.C. § 103. As evidence of obviousness,
the examiner relies upon Horrobin and Kimura I.
Claim 14 stands rejected under 35 U.S.C. § 103. As evidence of obviousness, the
examiner relies upon Horrobin and Kimura II.
We reverse for the reasons set forth herein.
Discussion
Background
The rejections of the claims on appeal, in their present form, were presented for the
first time in the Examiner's Answer of March 25, 1996 (Paper No. 15) and were
designated as new grounds of rejection. The examiner has relied on three abstracts
published in Chemical Abstracts as evidence in support of these rejections. The examiner
has, additionally, cited and apparently relies on, for the first time in the Supplemental
Examiner's Answer of March 17, 1997 (Paper No. 19) two abstracts of separate articles
by VanRollins et al. and a portion from Goodman and Gilman's. In the response filed
September 25, 1995 (Paper No. 10) appellants urge that "Horrobin (U.S. Patent No.
5,120,760)-- describes in more detail the technology disclosed in Chemical Abstract
'684." The U.S. Patent relies on the United Kingdom patent application 88/13766 for
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