Ex Parte Matzinger et al - Page 16


                 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 stereoisomers                      




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