Appeal No. 1999-1437
Application No. 08/732,065
the generic teaching indicates to one of ordinary skill in the art that species
falling within the generic disclosure, including the instantly claimed
compound, would possess the prior art use. It is well within the skill of the
artisan to select among the alternatives of the references to afford
compounds possessing the prior art use, . . . (Citation omitted.).
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of
presenting a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992). Only if that burden is met, does the burden of
coming forward with evidence or argument shift to the applicants. Id. In order to meet that
burden the examiner must provide a reason, based on the prior art, or knowledge
generally available in the art as to why it would have been obvious to one of ordinary skill in
the art to arrive at the claimed invention. Ashland Oil, Inc. v. Delta Resins & Refractories,
Inc., 776 F.2d 281, 297, n.24, 227 USPQ 657, 667, n.24 (Fed. Cir.), cert. denied, 475 U.S.
1017 (1986).
On the record before us, the examiner has not met the initial burden of establishing
why the prior art, relied on, would have led one of ordinary skill in this art to arrive at the
specific stereo isomer presently claimed. While acknowledging that "the Handa et al.
reference discloses a racemic compound 4-tert.butyl hydrogen 2(RS) - isobutylsuccinate . .
. ," appellants urge that Handa (Brief, page 12):
does not disclose [the] individual enantiomeric isomer[] claimed herein, nor
does it suggest a separation of a racemic mixture to obtain the present
invention as claimed.
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