Appeal No. 1999-0676
Application No. 08/465,625
In the answer mailed March 3, 1997 (Paper No. 12), the examiner does not
expressly refer to or cite legal precedent. Nevertheless, in setting forth the rejection under
35 USC § 103, the examiner apparently relies on the proposition of law that chemical
isomers can give rise to a prima facie case of obviousness (examiner’s answer, page 4,
lines 4 through 8). In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979)
(“[a]n obviousness rejection based on similarity in chemical structure and function entails
the motivation of one skilled in the art to make a claimed compound, in the expectation that
compounds similar in structure will have similar properties”). If this be the case, we note
that In re Payne has a second prong that must be considered. The prior art must be
enabling. In re Payne, 606 F.2d 303, 314, 203 USPQ 245, 255 (CCPA 1979)
(“[r]eferences relied upon to support a rejection under
35 U.S.C. § 103 must provide an enabling disclosure, i.e., they must place the claimed
invention in the possession of the public.”).
Here, Gibson specifies that the R2 substituent at position 25 must be alpha-
branched. The dispositive question is: can one skilled in the art arrive at the claimed
invention, based on Gibson’s disclosure alone? We answer that question in the negative.
Gibson’s disclosure is limited to a fermentation process involving an avermectin or
milbemycin producing organism (Abstract; col.1, lines 41-62; col. 3, lines 8-19; col. 4, lines
16-49; col. 5, lines 35-50). That process provides a compound having an alpha-branched
R2 substituent at position 25 (Abstract; col.2, lines 1-33). We have carefully reviewed
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