Appeal No. 1999-0462
Application 08/440,291
appealed claims would have been prima facie obvious over prior art cited by the
examiner. We agree with appellants that uncontroverted evidence of record is sufficient to
rebut any such prima facie case.
The “most preferred” hydroxy protecting group described by Holton, 1-
ethoxyethyl, contains an asymmetric carbon. In contrast, appellants’ 1-methyl-1-
methoxyethyl group at the 3-position of lactam (I) and at the 20 position on the C-13
sidechain of taxane (VII), contains a non-asymmetric carbon. Further, the starting $-lactam
of the present claims is a solid prepared in crystalline form in contrast with the “most
preferred” ethoxyethyl compound of Holton described as a liquid or “colorless oil” at
column 15, lines 37 through 39. Those facts are not controverted by the examiner, nor is
the argument, predicated on those facts, that the instantly claimed method gives rise to
unexpectedly superior results compared with the closest prior art. (Appeal Brief, pages 7
through 10).2
In conclusion, assuming arguendo that claims 8, 10 through 16, 18, and 24 through
31 would have been prima facie obvious over the cited prior art, we agree with appellants
that uncontroverted evidence of record serves to rebut any such prima facie case.
2 As stated in In re Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed.
Cir. 1986), If a prima facie case is made in the first instance, and if the applicant comes
forward with reasonable rebuttal, whether buttressed by experiment, prior art references,
or argument, the entire merits of the matter are to be reweighed. Here, the examiner’s
failure to reweigh the prima facie case of obviousness in light of appellant’s rebuttal
argument constitutes reversible error.
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