Appeal No. 1999-1437
Application No. 08/732,065
isomer from the racemic mixture described by Handa. Further, the examiner has offered
nothing which would establish that the reference is enabling for a process which would
yield the isolated S-isomer in question. See In re Hoeksema, 399 F. 2d 269, 273, 158
USPQ 596, 600 (CCPA 1968). Thus, the examiner has fail to establish that one of
ordinary skill would have been led to modify the explicit teaching of the reference in a
manner to arrive at the claimed invention since the prior art does not suggest the
desirability of the modification. In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127
(Fed. Cir. 1984). In re Fritch, 972 F.2d 1260, 1266, n.14, 23 USPQ2d 1780, 1783-84,
n.14 (Fed. Cir. 1982). In the absence of such evidence, the only suggestion to isolate the
(S)-isomer for use in appellants' process is provided by appellants’ disclosure of the
invention. However, use of this information as a basis for establishing a prima facie case
of obviousness, within the meaning of 35 U.S.C. § 103, would constitute impermissible
hindsight. There must be some reason, suggestion, or motivation found in the prior art
whereby a person of ordinary skill in the field of the invention would make the modifications
required. That knowledge can not come from the applicant’s invention itself. Diversitech
Corp. v. Century Steps, Inc., 850 F.2d 675, 678-79, 7 USPQ2d 1315, 1318 (Fed. Cir.
1988); In re Geiger, 815 F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir. 1987);
Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1143, 227 USPQ 543, 551 (Fed. Cir.
1985). Thus, on this record, the examiner has not provided those facts or evidence which
would reasonably support a conclusion that the claimed subject matter would have been
prima facie obvious within the meaning of 35 U.S.C. § 103. Where the examiner fails to
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