Appeal No. 2004-1212 Page 6
Application No. 09/316,624
Before entering such a rejection, however, the examiner should consider
whether those of skill in the art would have been motivated to practice the
instantly claimed method; whether they would had a reasonable expectation of
success; whether the prior art was enabling for the low molecular weight fraction
discussed by Kochel; and whether the evidence is sufficient to show that such a
low molecular weight fraction would have been the same as the Product R
described in the instant specification. In respect of the latter consideration, the
examiner should note that the Friedland patent claims Product R as a
composition; the apparent novelty and nonobviousness of Product R are factors
that should be considered in any future prosecution. Cf. In re Ochiai, 71 F.3d
1565, 1569, 37 USPQ2d 1127, 1131 (Fed. Cir. 1995): “The process invention
Ochiai recites in claim 6 specifically requires use of none other than its new,
nonobvious acid as one of the starting materials. One having no knowledge of
this acid could hardly find it obvious to make any cephem using this acid as an
acylating agent, much less the particular cephem recited in claim 6.”
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