Appeal No. 2001-0163
Application No. 08/951,502
We agree with Appellant. The Examiner has not explained, or cited evidence
that explained, that the advantages achieved with unsupported polysaccharide
derivatives in a single column (stationary phase) liquid chromatography process
would also have been expected to have been be achieved in a simulated moving bed
multicolumn chromatography process. The record indicates that the motivation relied
upon by the Examiner for using unsupported polysaccharide derivatives in a
simulated moving bed multicolumn chromatography process comes from the
Appellant’s description of their invention in the specification rather than coming from
the applied prior art and that, therefore, the Examiner used impermissible hindsight in
rejecting the claims. See W.L. Gore & Associates v. Garlock, Inc., 721 F.2d 1540,
1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983); In re Rothermel, 276 F.2d 393, 396,
125 USPQ 328, 331 (CCPA 1960). Consequently, the Examiner’s rejection is
reversed.
CONCLUSION
The rejection of claims 11 to 21 under 35 U.S.C. §§ 102 and 103 over
Yamashita is reversed. The rejection of claims 11 to 21 under 35 U.S.C. § 103 as
obvious over the combination of Yamashita, Ikeda ‘852 and Ikeda ‘635 is reversed.
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