Appeal No. 2002-2283
Application No. 08/882,513
CAPLUS, not the full disclosure of the published Japanese Kokai.
Moreover, the record before us contains, and the examiner appears
to have relied upon, a CAPLUS (Copyright 2002 ACS) print out of
CA 111:153338, not the original published chemical abstract itself.
On the face of this document, there is no clear evidence of the
date of entry of the abstract into the database or its
accessibility to the public. Nor does the Examiner’s Answer
identify the date of entry or accessibility. Nevertheless, we
accept appellants’ failure to contest the status of the abstract as
prior art as an acknowledgment that CA 111:153338 is prior art to
their application.
5. The Examiner’s Answer not only improperly and
incompletely cites In re Durden, 763 F.2d 1406, 226 USPQ 359 (Fed
Cir. 1985), but it relies upon Durden for the general rule that new
processes of preparing one class of chemical compounds would have
been prima facie obvious in view of a known process of preparing
another class of chemical compounds, which processes are identical
but for their starting materials. A cursory consideration of
Federal Circuit precedent citing, and/or reconsidering, Durden-
like issues, would have led the examiner to avoid such per se
rules. See In re Ochiai, 71 F.3d 1565, 1570-71, 37 USPQ2d 1127,
1132 (Fed Cir. 1995)(footnote omitted):
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