Appeal No. 2004-0245
Application 09/265,926
position, including hydrogenolysis of the 6-chloropurine intermediate as the last step to obtain
the final product.
Accordingly, one of ordinary skill in this art routinely following the teachings of Grinter
would have arrived at the claimed compound encompassed by appealed claim 5 without resort to
appellant’s specification and claims. See generally, Merck & Co., Inc. v. Biocraft Labs., Inc.,
874 F.2d 804, 807, 10 USPQ2d 1843, 1845-46 (Fed. Cir. 1989); In re Lemin, 332 F.2d 839, 841,
141 USPQ 814, 815-16 (CCPA 1964).
Therefore, since a prima facie case of obviousness has been established by the examiner
over Grinter, we have again evaluated all of the evidence of obviousness and nonobviousness
based on the record as a whole, giving due consideration to the weight of appellant’s arguments
in the brief. See generally, Johnson, supra; Piasecki, supra; Rinehart, supra.
We are not persuaded by appellant’s sole argument with respect to this ground of
rejection (brief, page 6) that the “examples” of Grinter require removal of the chloro group in
scheme “(i).” Indeed, as the examiner argues with respect to the examples of the reference (see
above p. 7), all of the teachings of the reference must be considered. See generally, Merck v.
Biocraft, 874 F.2d at 807, 10 USPQ2d at 1846 (quoting Lamberti, supra) (“But in a section 103
inquiry, ‘the fact that a specific [embodiment] is taught to be preferred is not controlling, since
all disclosures of the prior art, including unpreferred embodiments, must be considered.’”).
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of obviousness found in Grinter with appellants’ countervailing evidence
of and argument for nonobviousness and conclude that the claimed invention encompassed by
appealed claim 5 would have been obvious as a matter of law under 35 U.S.C. § 103(a).
The examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR § 1.136(a).
AFFIRMED
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