Appeal No. 1999-0676
Application No. 08/465,625
Appellants’ 25-ring position Gibson’s 25-ring position
.
methylene group no methylene group
According to the examiner,
[S]ince the groups at the 25-position encompassed by the
instant claims are isomers of the groups disclosed by the
reference, a person having ordinary skill in the art at the time of
the instant invention would have been motivated to modify the
reference’s compounds so that the same do no [sic] contain
alpha-branching at the 25-position because such a person
would have expected the resulting compounds to possess
antiparasitic activity (examiner’s answer, page 4, lines 4
through 8).
Appellants argue that Gibson provides “no motivation whatsoever to prepare
compounds which do not have an alpha-branched group (i.e., a secondary carbon atom)
bonded to the C-25 position” (appeal brief, page 9). Appellants also argue that the
examiner’s position is unsupported and a result of “hindsight combining the teachings [of
appellants] with those of Gibson” (id.). Appellants conclude that the examiner failed to
carry the burden of establishing a prima facie case of obviousness.
We agree with appellants, and therefore reverse the examiner’s rejection.
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