Appeal No. 2001-0694 Page 5
Application No. 08/908,807
The burden is on the examiner to set forth a prima facie case of
obviousness. See In re Alton, 76 F.3d 1168, 1175, 37 USPQ2d 1578, 1581
(Fed. Cir. 1996). In order to make a prima facie case of obviousness based on the
structural similarity, in this case the isomerism, between the claimed compound and
the compound disclosed 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.
In the rejection above, the examiner states that “[o]ne skilled in the art would
have been motivated to prepare compounds embraced by the reference genera
with the expectation of producing oxazolidine compounds which would be useful in
preparing taxane derivatives,” but does not set forth any facts or findings to support
the motivational statement. See In re Lee, 2002 U.S. App. LEXIS 855, *12 (Fed.
Cir. Jan. 18, 2002) (in reviewing an obviousness rejection, the court noted that
“conclusory statements” as to teaching, suggestion or motivation to arrive at the
claimed invention “do not adequately address the issue.”). The stereochemistry of
the sidechain at position 13 of the taxane derivatives appears to be important for
pharmacological function, and all the prior art cited by the examiner utilizes an
oxazolidine precursor to the sidechain that preserves the stereochemistry of the
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