Appeal No. 2001-2138
Application No. 08/403,276
4
25. Appellants argue further that evidence of record (Crossley ) shows
that the pharmaceutical activity of a new single stereoisomeric form “is not obvious to
envisage” compared to a known stereoisomeric form or a known racemic mixture. (Brief
at 4.)
26. Appellants urge that one skilled in the art would not have been able to
predict the discovered effect on spermazoid levels based on the known antilipemic activity
of the reference compounds. (Id.)
27. Appellants conclude that the obviousness rejection fails.
B. Discussion
We shall not sustain the examiner’s rejection, which is based on an inadequate
evidentiary record, and which fails to establish a prima facie case of unpatentability.
The evidentiary record
Findings of fact and conclusions of law by the USPTO must be made in accordance
with the Administrative Procedure Act, 5 U.S.C. § 706(A), (E) (1994). Zurko v. Dickinson,
527 U.S. 150, 158, 119 S.Ct. 1816, 1821, 50 USPQ2d 1930, 1934 (1999). Our reviewing
court has held that findings of fact must be supported by substantial evidence within the
record. In re Gartside, 203 F.3d 1305, 1315, 53 USPQ2d 1769, 1775 (Fed. Cir. 2000)
(“Because our review of the Board’s decision is confined to the factual record compiled by
4Roger Crossley, The Relevance of Chirality to the Study of Biological Activity, 48 TETRAHEDRON 8155,
8156, 8174, 8175 (1992), filed attached to Paper No. 14 on November 12, 1997.
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