Ex parte ARZENO et al.

Board of Patent Appeals and Interferences

Mar 18, 1998

07870841 (B.P.A.I. Mar. 18, 1998)

Application for patent filed April 20, 1992. According1
to appellants, the application is a continuation of
Application 07/094,220, filed September 8, 1987, now
abandoned, which is a continuation-in-part of Application
06/905,827, filed September 10, 1986, now abandoned.
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte HUMBERTO B. ARZENO and DAVID J. MORGANS, JR.
________________
Appeal No. 94-2062
Application 07/870,8411
________________
ON BRIEF
________________
Before WEIFFENBACH, ELLIS and OWENS, Administrative Patent
Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s final rejection of
Appeal No. 94-2062
Application 07/870,841
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claims 19-27, which are all of the claims remaining in the
application.
THE INVENTION
Appellants claim a method for the selective amidination
of a diamino compound having a particular generic formula to
an
"-amino-T-guanidino compound by reacting the diamino compound
with a formamidinesulfonic acid of a specified generic
formula. Claim 19 is illustrative and is appended to this
decision.
THE REFERENCES
Patchett et al. (Patchett) 0 012 401 Jun. 25, 1980
(European patent application)
Alhede et al. (Alhede) 1 587 258 Apr. 1, 1981
(British patent)
THE REJECTION
Claims 19-27 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Alhede alone or in combination with
Patchett.
OPINION
We have carefully considered all of the arguments
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Application 07/870,841
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advanced by appellants and the examiner and agree with
appellants that the aforementioned rejection is not well
founded. Accordingly, this rejection will be reversed.
Alhede discloses a method for producing guanidines by
reacting formamidinesulfonic acids with primary monoamines
(page
1, line 39 - page 2, line 20). The formamidinesulfonic acids
differ from those recited in appellants’ claim 19, but
appellants state that they do not assert that this difference
is a patentable distinction (brief, page 4). Appellants argue
that the patentable distinction lies in the difference between
the amine reactants and the products of appellants and those
of Alhede. See id.
The examiner argues (answer, page 6):
A chemical process with a predictable outcome
and otherwise obvious is not rendered unobvious
simply because either or both the starting material
and the product are novel. In re Durden, 763 F.2d
1406, 226 USPQ 359 (Fed. Cir. 1985). As such,
appellants’ use of an analogous diamine reactant in
the otherwise old amidination process is not, in and
of itself, sufficient to render the herein-claimed
process unobvious.
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Application 07/870,841
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The examiner reached his conclusion of obviousness of
appellants’ claimed invention based on a per se rule that use
of a new starting material in a prior art process or making a
new product by such a process would have been obvious to one
of ordinary skill in the art. As stated by the Federal
Circuit in In re Ochiai, 71 F.3d 1565, 1572, 37 USPQ2d 1127,
1133 (Fed. Cir.
1995), “reliance on per se rules of obviousness is legally
incorrect and must cease.” The court further stated:
Mere citation of Durden, Albertson, or any other
case as a basis for rejecting process claims
that differ from the prior art by their use of
different starting materials is improper, as it
sidesteps the fact-intensive inquiry mandated by
section 103. In other words, there are not
“Durden obviousness rejections” or “Albertson
obviousness rejections,” but rather only section
103 obviousness rejections.
In re Ochiai, 71 F.3d at 1570, 37 USPQ2d at 1132.
When an examiner is determining whether a claim should be
rejected under 35 U.S.C. § 103, the claimed subject matter as
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Application 07/870,841
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a whole must be considered. See Ochiai, 71 F.3d at 1569, 37
USPQ2d at 1131; In re Brouwer, 77 F.3d 422, 425, 37 USPQ2d
1663, 1666 (Fed. Cir. 1996). The subject matter as a whole of
process claims includes the starting materials and product
made. When the starting and/or product materials of the prior
art differ from those of the claimed invention, the examiner
has the burden of explaining why the prior art would have
motivated one of ordinary skill in the art to modify the
materials of the prior art process so as to arrive at the
claimed invention. See Ochiai, 71 F.3d at 1570, 37 USPQ2d at
1131. The examiner asserts that “[i]t is clear from the
disclosure in Alhede that amines generally may be reacted with
the sulfonic acid derivatives to form guanidines”, but does
not explain why the disclosure of the use of primary
monoamines would have suggested, to one of ordinary skill in
the art, the use of compounds having two primary amine groups,
particularly compounds which have the structure recited in
appellants’ claim 19 and which undergo a selective reaction as
recited in that claim.
The examiner further argues (answer, page 7):
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Application 07/870,841
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It is reasonable to expect that compound (II)
[sic, compound (III) in appellants’ claim 19] would
preferentially react with a primary amino group
particularly in situations where A is a bulky
peptidyl residue, for example. The Patchett
reference appears to support the examiner’s holding
that one of ordinary skill in the art would have
expected a primary amino group to be more reactive
with a sulfonyloxy group containing compound than a
secondary amino group.
This argument is not relevant to appellants’ claimed
method. The “A” group referred to by the examiner does not
appear in appellants’ claims, and appellants’ diamino
compound has no secondary amino group.
For the above reasons, we conclude that the examiner has
not carried his burden of establishing a prima facie case of
obviousness of appellants’ claimed invention over Alhede.
The examiner relies upon Patchett as evidence that
reaction of a formamidinesulfonic acid with a compound’s
primary amino groups is preferred over reaction with secondary
amino groups (answer, pages 5 and 7). This argument is not
well taken because the diamino compound in appellants’ claims
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Application 07/870,841
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does not include a secondary amino group. Thus, we conclude
that the examiner has not carried his burden of establishing a
prima facie case of obviousness of appellants’ claimed
invention over the combined teachings of Alhede and Patchett.
We note that the claims in the parent application,
07/094,220, were finally rejected, as in the present case,
under 35 U.S.C. § 103 over Alhede alone or in view of
Patchett, and that the rejection was affirmed by the Board
(Appeal No. 90-1038). Unlike the present case, the claims in
the parent case permit the diamino compound to include a
secondary amine, and do not require selectivity to one primary
amino group over a second primary amino group. Also, in the
parent case the Board relied upon U.S. 4,656,291 to Maryanoff
et al., which is not applied in the present case. Moreover,
in the parent case, the Board relied upon In re Durden, 763
F.2d 1406, 226 USPQ 359 (Fed. Cir. 1985), but did not have the
benefit of the court’s discussion of Durden in Ochiai and
Brouwer, supra. For these reasons, the Board’s decision in
the parent case is not controlling as to the present case.
DECISION
Appeal No. 94-2062
Application 07/870,841
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The rejection of claims 19-27 under 35 U.S.C. § 103 as
being unpatentable over Alhede alone or in combination with
Patchett is reversed.
REVERSED
CAMERON WEIFFENBACH )
Administrative Patent Judge )
)
)
)
JOAN ELLIS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
TERRY J. OWENS )
Administrative Patent Judge )
Appeal No. 94-2062
Application 07/870,841
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Tom M. Moran
Patent Law Department, A2-200
Syntex (U.S.A.) Inc., 3401 Hillview Ave.
P.O. Box 10850
Palo Alto, CA 94303
Appeal No. 94-2062
Application 07/870,841
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APPENDIX
Appeal No. 94-2062
Application 07/870,841
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