Appeal No. 2000-1024 Page 7
Application No. 08/379,551
Most tellingly, in the response to appellants’ argument that Webb cannot
be combined with Holy, the examiner responds that
Webb is not a secondary reference but rather a primary reference
applied for showing additional aspects of appellants’ invention as
obvious, mainly for its teaching of 2,6 diamino
phosphonomethoxypropyl purine, but Webb also teaches and
claims bases such as 2-amino purine, 8-substituted guanines
(guanine per se is excluded in the instant claims) which are within
at least claim 1.
Examiner’s Answer, page 9.
If Webb was not to be combined with Holy (US), it should have been
separately applied, or at least the examiner should have explicitly stated that
Webb was being applied in the alternative. The way in which the rejection was
laid out, however, makes it difficult to understand, much less rebut and review.
The burden is on the examiner to set forth a prima facie case of
obviousness. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598-99
(Fed. Cir. 1988). In order to make a prima facie case of obviousness based on
the structural similarity, in this case similarity between the claimed optical isomer
and its racemate taught by the prior art, not only must the structural similarity
exist, but the prior art must also provide reason or motivation to make the
claimed compound. See In re Dillon, 919 F. 2d 688, 692,16 USPQ2d 1897,
1901 (Fed. Cir. 1990) (en banc), In re Mayne, 104 F. 3d 1339, 1341, 41 USPQ2d
1451, 1454 (Fed. Cir. 1997); In re Payne, 606 F.2d 303, 313, 203 USPQ 245,
256 (CCPA 1979). Moreover, the prior art has to enable the ordinary artisan to
make the claimed compound. See Payne, 606 F.2d at 314. The rejection over
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