Ex Parte Matzinger et al

Board of Patent Appeals and Interferences

Aug 31, 2004

09546143 (B.P.A.I. Aug. 31, 2004)

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for publication and is not binding precedent of the Board.

Paper No. 22

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte PETER KARL MATZINGER,
MICHELANGELO SCALONE and ULRICH ZUTTER
__________

Appeal No. 2003-2146
Application No. 09/546,1431
__________

ON BRIEF2
__________

Before WINTERS, SCHEINER, and ADAMS, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134 from the
examiner’s final rejection of claims 12, 14, 15, 17, 19, 21, 23 and 25.
Notwithstanding appellants indication (Brief, page 2) that no claims have been
cancelled, claims 1-9 are cancelled. See Paper No. 2, page 2. Of the remaining
pending claims, the examiner has:
• objected to claims 13, 16, 18, 20, 22 and 24 as being dependent upon
a rejected base claim, but would be allowable if rewritten in
independent form (See Paper No. 3, page 6 and Paper No. 9, page 4);
and

1 The instant application is a divisional of Application No. 09/195,512, filed Apr. 3, 1997, now U.S.
Patent No. 5,902,882, issued May 11, 1999, which is a continuation of Application No.
08/832,253, filed Nov. 19, 1998, now U.S. Patent No. 6,069,245, issued May 30, 2000.

2 In accordance with 37 CFR 1.194(c), the Board decided that an oral hearing was not necessary
in this appeal.
Appeal No. 2003-2146 Page 2
Application No. 09/546,143

• indicated that claims 10, 11 and 27 are allowable (See Paper No. 3,
page 7, and Paper No. 9, page 4).

Claims 12, 17, 23 and 25 are illustrative of the subject matter on appeal
and are reproduced below:
12. A compound selected from the group consisting of compounds of the
formula

V[,]
wherein R4 is an amino-protecting group.
17. A compound selected from the group consisting of compounds of the
formula

VIII,

wherein R3 is lower alkyl and R4 is an amino-protecting group, in the
absence of substantial amounts of other enantiomers of the
compound.

23. A compound selected from the group consisting of compounds of the
formula

X,

wherein R4 is an amino-protecting group.

25. A compound selected from the group consisting of compounds of the
formula

N
R4
HO C(O)OR3
N
R4
HO NH2
N
HO NHR1
N
R4
HO C(O)OH
Appeal No. 2003-2146 Page 3
Application No. 09/546,143

XI,

wherein R1 is an acyl residue of an aromatic carboxylic acid and R4 is
an amino protecting group.

The references relied upon by the examiner are:
Barbier et al. (Barbier) 5,583,222 Dec. 10, 1996
(102(e) date Jan. 4, 1995)

Adams et al. (Adams), “Total synthesis of balanol: a potent protein kinase C
inhibitor of fungal origin,” J. Chem. Soc. Perkin Trans. I, pp. 2355-62 (1975)

Krogsgaard-Larsen et al. (Krogsgaard-Larsen), “Inhibitors of GABA Uptake.
Syntheses and 1H NMR Spectroscopic Investigations of Guvacine, (3RS, 4SR)-
4-Hydroxypiperidine-3-carboxylic Acid, and Related Compounds,” Acta Chemica
Scandinavica B, Vol. 32, pp. 327-34 (1978)

L. G. Wade, Jr. (Wade), Organic Chemistry 103 and 115 (Prentice-Hall, Inc.,
1987)

GROUND OF REJECTION
Claims 12, 14, 15, 17, 19, 21, 23 and 25 stand rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite in the recitation of the phrase
“amino protecting group.”
Claims 12, 14, 15, 17, 19, 21, 23 and 25 stand rejected under 35 U.S.C.
§ 112, first paragraph, as based on a disclosure that fails to enable the full scope
of the claimed invention.
Claim 17 stands rejected under 35 U.S.C. § 102(b) as anticipated by
Krogsgaard-Larsen.
Claims 23 and 25 stand rejected under 35 U.S.C. § 102(b) as anticipated
by Adams.
Appeal No. 2003-2146 Page 4
Application No. 09/546,143

Claim 25 stands rejected under 35 U.S.C. § 102(e) as anticipated by
Barbier.
Claims 25 and 26 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Barbier.
We reverse.
DISCUSSION
THE REJECTION UNDER 35 U.S.C. § 112, SECOND PARAGRAPH:
The claims are directed to a compound selected from the group consisting
of compounds of a specified formula wherein one of the substituents, R4, set
forth in the specified formula is an amino-protecting group. According to the
examiner (Answer, page 4), the “claims recite the limitation of ‘amino protecting
group’ which has no description in the specification other than ‘tert.-
butoxycarbonyl’ as a sole representative of said group. Thus, one skilled in the
art cannot ascertain what other groups can be considered as an
‘amino[-]protecting group’.” We note, however, while the examiner asserts (id.)
that the specification describes “tert.-butoxycarbonyl” as a sole representative of
an “amino-protecting group,” the examiner later finds (Answer, bridging sentence,
pages 4-5), the specification provides an enabling description of tert-butyl ester,
tert-butyl carboxylate, and tert-butoxycarbonyl as amino-protecting groups within
the scope of R4 as set forth in appellants’ claimed invention.
For their part, appellants assert (Brief, page 4), “[t]he term ‘amino-
protecting group’, as used in the rejected claims, is well-known in the art to which
this invention belongs, organic synthesis.” In support of this assertion appellants
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Application No. 09/546,143

rely on the table of contents to chapter 7 of Green3 to demonstrate that “‘amino
protecting groups’ are well-known and exemplified by many members, all of
which are within the skill of the art of organic synthesis.” We find it noteworthy to
mention that the title of this chapter (chapter 7) of Green is “Protection for The
Amino Group.”
In response, the examiner argues (Answer, page 7, emphasis removed),
“it is still unclear whether the scope of ‘amino protecting group’ includes groups
cited by Green, or goes beyond that.” The examiner makes a similar argument
(id.) with respect to appellants’ assertion (Brief, page 4) that other patents have
issued “with the term ‘amino protecting groups’ in the claims.” On consideration
of the record before us, we agree with appellants that the phrase “amino
protecting group” is a term of art. Accordingly, we disagree with the examiner’s
conclusion that the phrase is indefinite to those of skill in the art.
As set forth in Amgen Inc. v. Chugai Pharmaceutical Co., Ltd., 927 F.2d
1200, 1217, 18 USPQ2d 1016, 1030 (Fed. Cir. 1991):
The statute requires that “[t]he specification shall conclude with one
or more claims particularly pointing out and distinctly claiming the
subject matter which the applicant regards as his invention.” A
decision as to whether a claim is invalid under this provision
requires a determination whether those skilled in the art would
understand what is claimed. See Shatterproof Glass Corp. v.
Libbey-Owens Ford Co., 758 F.2d 613, 624, 225 USPQ 634, 641
(Fed. Cir. 1985) (Claims must “reasonably apprise those skilled in
the art” as to their scope and be “as precise as the subject matter
permits.”).

Furthermore, claim language must be analyzed “not in a vacuum, but
always in light of the teachings of the prior art and of the particular application

3 Theodora W. Greene (Green), Protective Groups in Organic Synthesis, pp. 218-22, Table of
Contents to Chapter 7, “Protection for The Amino Group” (John Wiley and Sons, 1981).
Appeal No. 2003-2146 Page 6
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disclosure as it would be interpreted by one possessing the ordinary skill in the
pertinent art.” In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA
1971). Whether a claim is indefinite under 35 USC § 112, second paragraph,
depends upon whether those skilled in the art would understand what is claimed,
or the scope or the bounds of the claim, when read in light of the specification.
The threshold step in resolving this issue is to determine whether the examiner
has met his burden of proof by advancing acceptable reasoning of indefiniteness.
Accordingly, we disagree with the examiner’s assertion (Answer, page 7)
that “[t]he issue of indefiniteness is not whether one skilled in the art can
understand a term (or terms), rather it is the metes and bounds of the invention.”
As set forth in Amgen, a decision as to whether a claim is invalid under 35 U.S.C
§ 112, second paragraph, requires a determination as to whether those skilled in
the art would understand what is claimed. Based on the examiner’s assertion
(Answer, page 7), and the evidence of record, it appears that there is no dispute
that a person of ordinary skill in the art would understand what is claimed.
Instead, it appears that the examiner is concerned solely with the breadth of the
claimed invention. In this regard, we would agree with the examiner that the
scope of the claim is extremely broad. However, as the examiner recognizes
(Answer, page 7), “breadth is not indefiniteness….” In re Miller, 441 F.2d 689,
693, 169 USPQ 597, 600 (CCPA 1971) (“[B]readth is not to be equated with
indefiniteness.”).
In our opinion, when the claims are considered as a whole, together with
the prior art and appellants’ disclosure, a person of ordinary skill in the art would
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Application No. 09/546,143

understand what is claimed. Accordingly, we reverse the rejection of claims 12,
14, 15, 17, 19, 21, 23 and 25 under 35 U.S.C. § 112, second paragraph.
THE REJECTION UNDER 35 U.S.C. § 112, FIRST PARAGRAPH:
While the examiner finds (Answer, page 5), appellants’ disclosure enabling
for the amino protecting group (R4), “as a tert-butyl ester, tert-butyl carboxylate,
or tert-butoxycarbonyl”, the examiner finds (id.), “[t]he disclosure does not
provide guidance as to what functional groups, and/or rings can be considered as
an amino protecting group.” Accordingly, the examiner concludes (id.), “one
skilled in the art will have to carry out undue experimentation, as the chemical art
is unpredictable.”
In response, appellants argue (Brief, page 7), “[i]t is not necessary for an
[a]pplicant to teach in the specification what is well-known in the art, and amino-
protecting groups are well-known in the art.” In support of this argument
appellants rely on In re Fuetterer, 319 F.2d 259, 138 USPQ 217 (CCPA 1963), In
re Robins, 429 F.2d 452, 166 USPQ 552 (CCPA 1970), In re Bowen, 492 F.2d
859, 181 USPQ 48 (CCPA 1974), and In re Skoll, 523 F.2d 1392, 187 USPQ 481
(CCPA 1975). However, according to the examiner (Answer, page 8), the “[c]ase
laws [sic] cited by applicant are outdated. The most recent case law is
(Genentech Inc. v. Novo Nordisk, 108 F.3d 1361, 42 USPQ 2d [sic] 1001 (Fed.
Cir 1997)), in which the court ruled that relying on the knowledge of one skilled in
the art cannot cure the deficiency in enablement.” In this regard, the examiner
asserts (id.), “[j]ust because a term is well-known in the art, it does not mean one
skilled in the art can prepare any intermediate having any ‘amino protecting
group’.” We will discuss each of the examiner’s assertions in turn.
Appeal No. 2003-2146 Page 8
Application No. 09/546,143

First, the examiner’s assertion that Genentech stands for the proposition
that “relying on the knowledge of one skilled in the art cannot cure the deficiency
in enablement” is, on this record, erroneous. To the extent that the examiner is
overly concerned about the publication date of case law, we note that on March
30, 2004 our appellant reviewing court rendered a decision in Chiron Corp. v.
Genentech Inc., 363 F.3d 1247, 70 USPQ2d 1321 (Fed. Cir. 2004). According to
our appellate reviewing court (id. at 1254, 70 USPQ2d at 1325-26, alteration
original),
a patent disclosure need not enable information within the
knowledge of an ordinarily skilled artisan. Thus, a patentee
preferably omits from the disclosure any routine technology that is
well known at the time of application. See Hybritech, 802 F.2d at
1384. At the other end of the knowledge continuum, a patent
document cannot enable technology that arises after the date of
application. The law does not expect an applicant to disclose
knowledge invented or developed after the filing date. Such
disclosure would be impossible. See In re Hogan, 559 F.2d 595,
605-06 [194 USPQ 527] (CCPA 1977). Nascent technology,
however, must be enabled with a “specific and useful teaching.”
Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d 1361, 1368 [42
USPQ2d 1001] (Fed. Cir. 1997). The law requires an enabling
disclosure for nascent technology because a person of ordinary
skill in the art has little or no knowledge independent from the
patentee’s instruction. Thus, the public’s end of the bargain struck
by the patent system is a full enabling disclosure of the claimed
technology. See, e.g., J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred
Int’l, Inc., 534 U.S. 124, 142 [60 USPQ2d 1865] (2001).

On this record, the examiner failed to provide any evidence that the
claimed invention is directed to a nascent technology. To the contrary, the
examiner did not dispute appellants’ assertion (Brief, page 4) that “‘amino
protecting groups’ are well-known and exemplified by many members, all of
which are within the skill of the art of organic synthesis.” Accordingly, contrary to
the examiner’s assertion Chiron reaffirms the well-established concept that “a
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Application No. 09/546,143

patent disclosure need not enable information within the knowledge of an
ordinarily skilled artisan. Thus, a patentee preferably omits from the disclosure
any routine technology that is well known at the time of application.”
Regarding the examiner’s proffer that one skilled in the art would not be
able to prepare “any intermediate having any ‘amino protecting group’,” we
remind the examiner that “[w]hen rejecting a claim under the enablement
requirement of section 112, the PTO bears an initial burden of setting forth a
reasonable explanation as to why it believes that the scope of protection
provided by that claim is not adequately enabled by the description of the
invention provided in the specification of the application; this includes, of course,
providing sufficient reasons for doubting any assertions in the specification as to
the scope of enablement.” In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d
1510, 1513 (Fed. Cir. 1993). “[It] is incumbent upon the Patent Office, whenever
a rejection on this basis is made, to explain why it doubts the truth or accuracy of
any statement in a supporting disclosure and to back up assertions of its own
with acceptable evidence or reasoning which is inconsistent with the contested
statement. Otherwise, there would be no need for the applicant to go to the
trouble and expense of supporting his presumptively accurate disclosure.”
In re Marzocchi, 439 F.2d 220, 224, 169 USPQ 367, 370 (CCPA 1971).
In our opinion, the examiner failed to meet his burden of establishing that
appellants’ disclosure does not enable the full scope of the claimed invention.
The test for compliance with the enablement requirement of 35 U.S.C. § 112, first
paragraph, is whether one skilled in the art would have to resort to undue
experimentation in order to practice the invention as broadly as claimed. In
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Application No. 09/546,143

considering this issue, we note that appellant is not required to disclose every
parameter encompassed by the claims. See In re Angstadt, 537 F.2d 498,
503,190 USPQ 214, 218 (CCPA 1976). As set forth above, it is examiner’s
burden to show that one skilled in the art would have to resort to undue
experimentation in order to practice the invention as broadly claimed. We are not
persuaded by the examiner’s reliance on In re Howarth, 654 F.2d 103, 107, 210
USPQ 689, 693 (CCPA 1981) in support of his assertion that appellant failed to
“provide the starting material for R4, nor a source for an ‘amino protecting
group’….” As Howarth, F.2d at 105, 210 USPQ at 691-92 recognizes, “a patent
applicant need not include in the specification that which is already known to and
available to the public.” In our opinion, on this record, the examiner failed to
meet his evidentiary burden of establishing that a person of ordinary skill in the
art would not be able to practice the claimed invention without undue
experimentation. As set forth in Atlas Powder Co., v. E.I. DuPont De Nemours &
Co., 750 F.2d 1569, 1576, 224 USPQ 409, 413 (Fed. Cir. 1984) “[t]he fact that
some experimentation is necessary does not preclude enablement; what is
required is that the amount of experimentation ‘must not be unduly extensive.’”
Finally, we note that the examiner’s rationale is internally inconsistent.
First the examiner finds appellants’ specification “enabling for R4 as a tert-butyl
ester, tert-butyl carboxylate, or tert-butoxycarbonyl…” yet later finds “undue
experimentation is inevitable for one skilled in the art to make and use
compounds with R4 as a group other than tert.-butoxycarbonyl.”
On reflection, it is our opinion that the examiner failed to meet his burden
of establishing that appellants’ disclosure does not enable the full scope of the
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Application No. 09/546,143

claimed invention. Accordingly, we reverse the rejection of claims 12, 14, 15, 17,
19, 21, 23 and 25 under 35 U.S.C. § 112, first paragraph.
THE REJECTIONS UNDER 35 U.S.C. § 102:
Krogsgaard-Larsen:
According to the examiner (Answer, page 9), “[c]ompounds 12 and 13 on
page 328 [of Krogsgaard-Larsen] are embraced by formula VIII in claim 17 with
R3 as lower alkyl, and R4[ ]as an amino protecting group.” We will separately
discuss the merits of the rejection as it relates to compounds 12 and 13.
Compound 13
As appellants point out (Brief, page 8), “[c]ompound 13 of Krogsgaard-
Larsen et al. has a trans configuration between the hydroxyl and ester groups …
[and therefore] does not encompass the compounds of claim 17, which have a
cis configuration between the hydroxyl and ester groups….” We agree.
We are not persuaded by the examiner’s argument (Answer, page 10,
emphasis removed), “spatial orientation of a compound can flip flop from one
form to the other because bonds are not static.” According to the examiner (id.),
if a trans-form of a compound [exists], a cis-form also exists inevitably. This is
the most fundamental principle in stereo-chemistry. So, if a reference discloses
a trans-form, then a cis-form will be inherently embraced.” The examiner’s logic
eludes us. The examiner fails to explain how one of ordinary skill in the art can
isolate a particular enantiomeric form of a compound, as set forth in appellants’
claimed invention, whose spatial orientation “flip flops” from one spatial
orientation to another. Further, it appears that the examiner is confused with
regard to “the most fundamental principles” of stereo-chemistry. The trans
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Application No. 09/546,143

conformation of a molecule is not the stereoisomer of the cis conformation of a
molecule. To the contrary, both the trans and the cis conformations of a
molecule may each have two stereo-isomers, +/- trans and +/- cis. For example,
for a trans molecule of the formula set forth in appellants’ claim 17, the two
enantiomers can be illustrated as follows:

In contrast, for a cis molecule of the formula set forth in appellants’ claim
17, the two enantiomers can be illustrated as follows:
N
R4
HO C(O)OR3

Note, as the examiner explains (Answer, bridging sentence, pages 10-11), with
regard to compound 12, “both the –OH and the –C(O)OCH3 can be pointed
upward [ ] or downward [ ], and still have [a] cis-configuration.” These
compounds which are nonsuperimposable mirror images of one another are
called “enantiomers.” As can be seen from the illustrations, cis-enantiomers
differ from enantiomers in the trans-conformation.
N
R4
HO C(O)OR3
N
R4
HO C(O)OR3
N
R4
HO C(O)OR3
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Application No. 09/546,143

Accordingly, as appellants point out (Brief, page 8), despite the examiner’s
assertions to the contrary, the trans confirmation of a molecule, as set forth in
compound 13 of Krogsgaard-Larsen, cannot anticipate a specific enantiomeric
form of the cis conformation of a molecule as set forth in appellants’ claimed
invention.
Compound 12
As the examiner recognizes (Brief, page 10, emphasis removed), “[t]he
symbol, ‘(±)’ [as it appears in the illustration of compound 12 of Krogsgaard-
Larsen], refers to optical isomers of the cis-compound.” Stated differently,
compound 12 of Krogsgaard-Larsen refers to a racemic mixture containing both
the “+” and the “–” enantiomers of the cis configuration of compound 12. As
appellants point out (Brief, page 9), “claim 17 excludes the racemic mixture
disclosed [by Krogsgaard-Larsen] as compound 12.” In this regard, we remind
the examiner, as set forth in Akzo N.V., Aramide Maatschappij v.o.f. v. United
States Int’l Trade Comm’n, 808 F.2d 1471, 1479, 1 USPQ2d 1241, 1245 (Fed.
Cir. 1986), “[i]n addition to identity of invention, anticipation requires that a prior
art reference must be enabling, thus placing the allegedly disclosed matter in the
possession of the public.” Here the examiner fails to explain how the racemic
mixture of compound 12 taught by Krogsgaard-Larsen provides an enabling
disclosure of the specific enantiomer set forth in appellants’ claimed invention.
See In re May, 574 F.2d 1082, 1090, 197 USPQ 601, 607 (CCPA 1978), citing In
re Williams, 171 F.2d 319, 80 USPQ 150 (1948), “the novelty of an optical isomer
is not negated by the prior art disclosure of its racemate.”
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Application No. 09/546,143

For the foregoing reasons, we reverse the rejection of claim 17 under 35
U.S.C. § 102(b) as anticipated by Krogsgaard-Larsen.
Adams:
According to the examiner (Answer, page 9), “Formula X in [appellants’]
claim 23 inherently embraces compound 20 on page 2356 [of Adams]. Formula
XI in [appellants’] claim 25 inherently embraces compound 21 on page 2357 [of
Adams].” However, as appellants point out (Brief, pages 7-8), the compound
taught by Adams is in the trans-configuration, not the cis-configuration as
required by appellants’ claimed invention. To emphasize this “fundamental
principle” of stereo-chemistry, we note that Adams resolve the enantiomers of
compound 21. Scheme 3 on page 2357 of Adams, illustrates the two
enantiomeric forms (compound 21a and 21b) of the trans configuration of
compound 21. See Adams, bridging sentence, page 2356, column 2 – page
2357, column 1; and Scheme 3, page 2357.
For the foregoing reasons, we reverse the rejection of claims 23 and 25
under 35 U.S.C. § 102(b) as anticipated by Adams.
Barbier:
According to the examiner (Answer, page 9), “Formula XI in [appellants’]
claim 25 inherently embraces compounds B1-B23 listed on columns 18-21 [of
Barbier]. However, as appellants point out (Brief, page 8), “[t]he exemplified
compounds of Barbier et al. are all in the trans [con]formation.”4 Therefore,
appellants assert (id.), “the teaching of the trans [con]formation does not
anticipate the instantly claimed, structurally distinct, cis [con]formation.”
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Application No. 09/546,143

Accordingly, we reverse the rejection of claim 25 under 35 U.S.C.
§ 102(e) as anticipated by Barbier.
THE REJECTION UNDER 35 U.S.C. § 103:
According to the examiner (Answer, page 11), Barbier “disclose a group of
intermediates represented by formula III which resembles … [appellants’]
claimed formula XI….” From this the examiner asserts (id.), “[w]hile Barbier et al.
do not disclose the cis-configuration of compounds of formula III or its species,
such form is suggested in the racemic mixture of cis- and trans- represented by
formula III.” Accordingly, the examiner concludes (Answer, page 12), since

4 We also note the examiner’s statement (Answer, page 11), Barbier “do not disclose the cis-
configuration of compounds of formula III or its species….”
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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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Application No. 09/546,143

set forth in appellants’ claims 25 and 26 are obvious in view of a disclosure of the
trans- and cis-isomers of the generic formula set forth on column 9 of Barbier.
This is error. Ochiai at 1572, 37 USPQ2d at 1133 (“reliance on per se rules of
obviousness is legally incorrect and must cease.”).
We recognize, as set forth in In re Deuel, 51 F.3d 1552, 34 USPQ2d 1210
(Fed. Cir. 1995), that a prima facie case of obviousness based on structural
similarity may arise if the “[s]tructural relations provide the requisite motivation or
suggestion to modify known compounds to obtain new compounds. For
example, a prior art compound may suggest its homologs because homologs
often have similar properties and therefore chemists of ordinary skill would
ordinarily contemplate making them to try to obtain compounds with improved
properties.” Id. at 1558, 34 USPQ2d at 1214. See also, e.g., In re Payne, 606
F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979) (“An obviousness rejection
based on similarity in chemical structure and function entails the motivation of
one skilled in the art to make a claimed compound, in the expectation that
compounds similar in structure will have similar properties.”). However, as set
forth in In re Doyle, 63 USPQ2d 1161, 1162 (Fed. Cir. 2002), footnote omitted,
Like a human hand, a chiral molecule cannot be
superimposed on its mirror image, otherwise known as its
enantiomer. Altering the relative orientation of the groups bonded
to the various chiral centers of a molecule (i.e., creating a different
stereoisomer of the compound) can have profound effects on the
compound’s properties, especially with respect to how the
compound interacts with other chiral molecules.

Thus, assuming arguendo that it would have been prima facie obvious to a
person of ordinary skill in the art to separate the cis- and trans-conformations of a
compound of formula III in Barbier, the examiner failed to identify any evidence
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Application No. 09/546,143

that it would have been prima facie obvious to then separate the + and –
stereoisomers of the cis-conformation to arrive at appellants’ claimed invention.
Accordingly, we reverse the rejection of claims 25 and 26 under 35 U.S.C. § 103
as being unpatentable over Barbier.

REVERSED

)
Sherman D. Winters )
Administrative Patent Judge )
)
) BOARD OF PATENT
)
Toni R. Scheiner ) APPEALS AND
Administrative Patent Judge )
) INTERFERENCES
)
)
Donald E. Adams )
Administrative Patent Judge )

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