Ex Parte Hof et al

Board of Patent Appeals and Interferences

Aug 4, 2004

09887933 (B.P.A.I. Aug. 4, 2004)

The opinion in support of the decision being entered today
was not written for publication and is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE

_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte ROBERT PATRICK HOF,
PETRUS JOHANNES HERMSEN and RONUS DE BODE
_______________

Appeal No. 2004-0971
Application No. 09/887,933
_______________

ON BRIEF
_______________

Before WALTZ, KRATZ, and PAWLIKOWSKI, Administrative Patent
Judges.

PAWLIKOWSKI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134
from the examiner’s final rejection of claims 12 through
22.
Claim 12 is representative of the subject matter on
appeal, and is set forth below:
12. A process for racemising an enantiomer-enriched
Schiff base of a primary amide of an amino acid which
process comprises contacting said enantiomer-enriched
Schiff base of a primary amide of an amino acid with a
strong base in an organic solvent,
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Application No. 09/887,933

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wherein said strong base is chemically reactive with
water.

The examiner relies upon the following reference as
evidence of unpatentability:
Hijiya et al. (Hijiya) 5,679,857 Oct. 21, 1997

Claims 12 through 22 stand rejected under 35 U.S.C.
§ 103 as being obvious over Hijiya.

OPINION
In the paragraph bridging pages 3 and 4 of the Brief,
appellants argue that there is no teaching or suggestion in
Hijiya of the racemization of a Schiff base of a primary
amide of an amino acid.1 Appellants argue that Hijiya
discloses racemization of a Schiff base of a secondary
amino acid amide. On page 4 of the Brief, appellants argue
that Hijiya does not provide a suggestion or motivation to
modify the secondary amino acid amides to arrive at the
primary amino acid amides used in the claimed invention.
On page 5 of the Brief, appellants also argue that there is
no indication of why a skilled artisan would expect that a
primary amide of an amino acid would function equivalently
in the teachings of Hijiya. See also pages 2-3 of the
Reply Brief.

1
The examiner agrees that Hijiya does not teach a primary amide
of an amino acid. Answer, page 3.
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Application No. 09/887,933

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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.
Appeal No. 2004-0971
Application No. 09/887,933

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Furthermore, the examiner has not provided any factual
basis that one of ordinary skill in the art would have
reasonably expected a primary amide to possess the same
function/properties of a secondary amide in appellants’
claimed process. On the other hand, appellants discuss in
detail, on pages 3-4 of the Reply Brief, how “not all
amides are created equal”.
We note that the initial burden of presenting a prima
facie case of unpatentability on any ground rests with the
examiner. See In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992). We also note that in
order for a prima facie case of obviousness of the claimed
invention to be established, the prior art as applied must
be such that it would have provided one of ordinary skill
in the art with both a suggestion to carry out appellants’
claimed invention and a reasonable expectation of success
in so doing. See In re Dow Chem. Co., 837 F.2d 469, 473, 5
USPQ2d 1529, 1531 (Fed. Cir. 1988). “Both the suggestion
and the expectation of success must be founded in the prior
art, not in the applicant’s disclosure.” Id.
In the instant case, as pointed out by appellants on
pages 4-5 of the Reply Brief, the examiner has, at best,
offered an “obvious to try” standard, which is insufficient
to support a prima facie case. See, In re Geiger, 815 F.2d
686, 687, 2 USPQ2d 1276, 1278; cf. In re Wesslau, 353 F.2d
238, 241, 147 USPQ 391, 393 (CCPA 1965).

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Application No. 09/887,933

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In view of the above, we reverse the rejection.

REVERSED

THOMAS A. WALTZ )
Administrative Patent Judge )
)
)
)
) BOARD PATENT
PETER F. KRATZ ) APPEALS
Administrative Patent Judge ) AND
)INTERFERENCES
)
)
)
BEVERLY A. PAWLIKOWSKI )
Administrative Patent Judge )

BAP:psb

Appeal No. 2004-0971
Application No. 09/887,933

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