Appeal No. 2003-2146 Page 16 Application No. 09/546,143 Barbier recognizes that substituents on the heterocylic ring can have [a] cis-configuration … (see column 4, line 30) … one of ordinary skill in the art would have been motivated to make the cis-configuration of compounds of formula III because such a configuration had been acknowledged by Barbier … as an alternative to the trans- configuration. According to the examiner (id.), “it is within the level of one skilled in the art to obtain the claimed cis-form from the teaching of Barbier et al., and conventional methods of resolving cis- and trans- forms.” Once again, we are compelled to point out that the trans conformation of a molecule is not the stereoisomer of the cis conformation of a molecule. Further, the burden is on the examiner to establish a prima facie case of obviousness of the claimed subject matter over prior art references. In re Deuel, 51 F.3d 1552, 1557, 34 USPQ2d 1210, 1214 (Fed. Cir. 1995). Only after that burden is met must the applicant 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). On this record, the examiner fails to provide substantial evidence in support his assertion that “it is within the level of one skilled in the art to obtain the claimed cis-form from the teaching of Barbier et al., and conventional methods of resolving cis- and trans- forms.” Emphasis added. At best, the examiner appears to have relied on a per se rule that the specific stereoisomersPage: Previous 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 NextLast modified: November 3, 2007