Appeal No. 2001-1946 Page 5
Application No. 08/874,463
analysis required by 35 U.S.C. § 103(a), this constitutes reversible error.
Further, the examiner's statement that "the biological activity of compounds is
well known to be dependent upon the optical isomeric form" (Paper No. 3, page 3) is
not supported by evidence in the record. On the contrary, the Tombo et al. review
article relied on by applicants refutes what, according to the examiner, is "well known" in
the art.1 See Tombo et al. at page 1194, second column, stating that "the real situation
in crop protection is far from black-and-white ('good enantiomer, bad racemate');" also
note the six principal possibilities, frequently met in agrochemical research and
development, outlined by Tombo et al. in the paragraph bridging pages 1194-95. The
examiner has not established that a person having ordinary skill in the art, at the time
applicants' invention was made, would have had a reasonable expectation that the
compounds recited in claims 1 through 4 and 8 through 10, with the sterochemistry
depicted, would possess the desired biological activity. Couched in terms of the case
law, the examiner has not established that a person having ordinary skill would have a
sufficient basis for the necessary predictability of success to here sustain a rejection
under 35 U.S.C. § 103. In re Clinton, 527 F.2d 1226, 1228, 188 USPQ 365, 367
(CCPA 1976).
Further, we agree with applicants that:
The processes disclosed for producing the compounds of '572
[Michelotti] would produce only racemic mixtures. There is no disclosure
in '572 of any method or any other information on how to obtain or resolve
1 Tombo et al., "Chirality and Crop Protection," Angewandte Chemie
International Edition in English, Vol. 30, pp. 1193-1215 (October 1991)
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