Appeal No. 2002-1438 Page 6
Application No. 09/345,966
that "it is facts appearing in the record, rather than prior decisions in and of themselves,
which must support the legal conclusion of obviousness under 35 U.S.C. § 103(a)."
On this record, the examiner has not established that the prior art would have led
a person having ordinary skill to the invention recited in claims 1, 2, 6 through 12, and
16 through 21, including the order of steps set forth in those claims. Nor has the
examiner applied the facts and holding of any reported case to the facts before us; or
explained why any reported case should be considered controlling.
Second, according to the examiner, "[t]he instant process differs from Doll's
process in having additional steps comprising racemization of the undesirable (-) isomer
by heating followed by resolution of the racemate" (Paper No. 10, paragraph bridging
pages 3 and 4). In an effort to bridge this difference, the examiner relies on the
"secondary references" Klibanov and Kessels.
However, as correctly pointed out by applicants, neither Klibanov nor Kessels
discloses or suggests the conditions of racemization recited in each independent claim
on appeal. Neither Klibanov nor Kessels discloses or suggests racemization of "the
undesirable (-) isomer" by heating at 100 to 200°C in a solvent selected from dimethyl
formamide, toluene, or 1,2-dichlorobenzene as required by all of the appealed claims.
Therefore, the "secondary references" relied on by the examiner for teaching
racemization would not have led a person having ordinary skill in the art to applicants'
claimed racemization step which specifically requires heating at 100 to 200°C in a
solvent selected from dimethyl formamide, toluene, or 1,2-dichlorobenzene.
The examiner argues that it would have been obvious to carry out racemization
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