Appeal No. 2001-0121 Page 12
Application No. 08/212,185
To imbue one of ordinary skill in the art with knowledge of
the invention in suit, when no prior art reference or references of
record convey or suggest that knowledge, is to fall victim to the
insidious effect of a hindsight syndrome wherein that which only the
inventor taught is used against its teacher.
Based on the evidence before us we are compelled to find that the
examiner failed to meet her burden3 of presenting the evidence to establish a
prima facie case of obviousness. Accordingly, we reverse the rejection of claims
97-102 under 35 U.S.C. § 103 as being unpatentable over Fu.
SUMMARY
The rejection of claims 96-103 under 35 U.S.C. § 112, first paragraph, is
reversed.
The rejection of claim 100 under 35 U.S.C. § 102(a) as anticipated by
Decker is vacated.
The rejection of claims 97-102 under 35 U.S.C. § 103 as being
unpatentable over Fu is reversed.
The application is remanded to the examiner, as discussed supra, for
further consideration as to the scope of the term “small molecules” in the context
of appellants’ claimed invention.
3 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).
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