Appeal No. 2001-1946 Page 4
Application No. 08/874,463
examiner refer to any previous Office action for an appropriate explanation of the
rejection. All we have is a statement identifying the claims under rejection (1-4
and 8-10); the reference relied on (Michelotti); and the relevant statutory provision
(35 U.S.C. § 103(a)).
As best we can judge, the explanation supporting the rejection of claims 1-4 and
8-10 may be found in the first Office action mailed January 2, 1998 (Paper No. 3, page
3). There the examiner apparently invokes a per se rule of obviousness, i.e., a per se
rule that the S enantiomer recited in applicants' claims would have been prima facie
obvious in view of the racemate disclosure by Michelotti. According to the examiner,
racemic N-Acetonylbenzamides are well known for their fungicidal activity
as taught by Michelotti and the biological activity of compounds is well
known to be dependent upon the optical isomeric form since biological
molecules such as proteins, carbohydrates etc. are themselves optical
enantiomers [Paper No. 3, page 3, emphasis added].
Therefore, the examiner argues, "it would have been obvious to one skilled in the art to
prepare compositions containing either S or R enantiomers of [racemic] N-
Acetonylbenzamides (compounds of Machelotti [sic])" (id.). As stated in In re Ochiai,
71 F.3d 1565, 1572, 37 USPQ2d 1127, 1133 (Fed. Cir. 1995), however,
The use of per se rules, while undoubtedly less laborious than a search
and comparison of the claimed invention--including all its limitations--with
the teachings of the prior art, flouts section 103 and the fundamental case
law applying it. Per se rules that eliminate the need for a fact-specific
analysis of claims and prior art may be administratively convenient for
PTO examiners and the Board. Indeed, they have been sanctioned by
the Board as well. But reliance on per se rules of obviousness is legally
incorrect and must cease.
Accordingly, to the extent that the examiner would apply a per se rule of obviousness to
reach the S enantiomer recited in applicants' claims, in lieu of the comprehensive
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007