Appeal No. 2001-2138
Application No. 08/403,276
come forward with arguments or evidence in rebuttal. Id. Findings of fact must be
supported by substantial evidence in the record. In re Gartside, 203 F.3d 1305, 1315, 53
USPQ2d 1769, 1775 (Fed. Cir. 2000). A rejection under § 103 is proper only when “the
PTO establishes that the invention as claimed in the application is obvious over cited prior
art, based on the specific comparison of that prior art with claim limitations.” In re Ochiai,
71 F.3d 1565, 1572, 37 USPQ2d 1127, 1133 (Fed. Cir. 1995) (emphasis added).
The only fact relied on by the examiner in this appeal is that RUS1 discloses a
stereoisomer of the claimed compounds. (See the Answer at 4; the final office action on
the merits, Paper No. 12 at 2–3; and the first office action on the merits, Paper No. 8 at 3.)
While a single disclosed chemical structure or formula might suffice as the sole evidence
of unpatentability in a rejection under 35 U.S.C. § 102 for anticipation, such will rarely, if
ever, suffice as substantial evidence of obviousness under § 103(a). This is because the
examiner must explain why the differences would have been obvious, and the explanation
must be supported by evidence in the record.
In the present case, the examiner appears to have relied on a per se rule that a
stereoisomer is obvious in view of a disclosure of another stereoisomer in the prior art.
(Answer at 4.) This is error. Ochiai at 1572, 37 USPQ2d at 1133 (“reliance on per se
rules of obviousness is legally incorrect and must cease.”) Moreover, the cases cited by
the examiner (Paper No. 8 at 3) do not support the examiner’s position.
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