Appeal No. 2004-0971
Application No. 09/887,933
In response, on page 5 of the Answer, the examiner
states that the claims are directed to a process. The
examiner states that the process of Hijiya is an analogous
process. The examiner states that appellants have argued
and admitted that Hijiya teaches a genus of an amino acid
amide.2 The examiner states that this genus consists of
only three species, primary, secondary, and tertiary amide.
The examiner states that “[s]election of three species from
one genus is well within the ordinary skill in the art for
the process, without undue experimentation, especially when
there is a chiral center present”. Answer, page 5.
Because the examiner has not demonstrated that Hijiya
teaches a genus of an amino acid amide, the examiner’s
premise that “selection of three species from one genus”
would have been obvious, is not supported by the facts of
record. We emphasize that the examiner’s statement of the
rejection made on page 3 of the Answer does not point to
any disclosure in Hijiya that teaches a genus. See, also,
footnote 2.
2 The examiner does not point to a location in the Brief where
appellants admit that Hijiya discloses a genus. In fact, we
observe that on page 4 of the Brief, appellants state “[e]ven for
the sake of argument Hijiya teaches a genus of amino acid amides
. . . “. This is not an admission by appellants that Hijiya
teaches a genus. At best, appellants acknowledge that Hijiya
teaches a secondary amino acid amide. The examiner does not
point to any disclosure in Hijiya that a genus of an amino acid
amide is taught.
3
Page: Previous 1 2 3 4 5 6 Next
Last modified: November 3, 2007