Appeal No. 2003-1991 5
Application No. 09/412,258
that the difference actually obtained would not have been expected by one skilled in the art
at the time of the invention, Id.; In re D’Ancicco, 439 F.2d 1244, 58 CCPA 1057
(1971).” See In re Freeman, 474 F.2d 1318, 1324, 177 USPQ 139, 142 (CCPA
1973).
On the record before us, the claimed subject matter is directed to an intermediate
compound, i.e., a C1 to C6 alkyl ester of 3-cyano-5-methyl hexanoic acid. The
intermediate is thereafter hydrogenated to form the corresponding C1 to C6 alkyl ester of
3-aminomethyl-5-methyl hexanoic acid, also known as isobutyl-GABA. See specification,
page 1, lines 16-18. The invention also provides for the resolution of racemic isobutyl-
GABA to obtain the S-stereo isomer. See specification, page 3, lines 12-16.
The single reference before us to Benneville generically discloses the compounds of
claims 3 and 30 and as admitted by the appellants is sufficient to establish a prima facie
case of obviousness with respect to the claimed subject matter. The appellants in
attempting to rebut the prima facie case of obviousness established by the examiner have
introduced a declaration by Charles P. Taylor undisputedly presenting data that shows that
racemic isobutyl-GABA and the S(+)-isobutyl isomer called pregabalin possess superior
properties than corresponding homologous and analogous compounds. See Answer, pages
8 and 9.
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