Ex parte Baker et al.

Board of Patent Appeals and Interferences

Jun 11, 1998

07798971 (B.P.A.I. Jun. 11, 1998)

Application for patent filed November 29, 1991. 1
According to appellants, this application is a continuation of
Application No. 07/525,094, filed May 17, 1990, 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journal and (2) is not binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte GEOFFREY H. BAKER, RODERICK J. DORGAN,
DAVID O. MORGAN, PETER R. SHELLEY and SIMON E. BLANCHFLOWER
________________
Appeal No. 95-0544
Application No. 07/798,9711
________________
ON BRIEF
________________
Before WINTERS, WILLIAM F. SMITH and JOHN D. SMITH,
Administrative Patent Judges.
WINTERS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal was taken from the examiner's decision
rejecting claims 12 and 14 through 17, which are all of the
claims remaining in the application.
Appeal No. 95-0544
Application No. 07/798,971
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Claim 12, which is illustrative of the subject matter on
appeal, reads as follows:
12. A process for preparing a compound of formula (I)
wherein
R is hydrogen or optionally protected hydroxy;1
R is alkoxy, optionally protected hydroxy, oxo, oximino,2
or oximino substituted by an organic radical;
R is hydrogen, optionally protected hydroxy, or a group 3
4'-("-L-oleandroxyl)-"-L-oleandroxyloxy or "-L-oleandroxyloxy
wherein the terminal hydroxy group is optionally protected;
R , R , R , and R are the same or different and each is4 5 6 7
hydrogen or an organic radical; and
R is amino, imino, amino substituted by an organic8
radical, imino substituted by an organic radical, optionally
protected hydroxy, or oxo, the process comprising: (hydrating
and) cyclizing a compound of formula (II), (IV), or (V)
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wherein
R is hydrogen or lower alkyl, and R is optionally18 20
protected ketone.
The single prior art reference relied on by the examiner
is:
Smith, III et al. (Smith) 4,408,059 Oct. 4, 1983
All of the appealed claims stand rejected under 35 U.S.C.
§ 103 as unpatentable over the combined disclosures of Smith
and the acknowledged state of the prior art set forth in the
specification, pages 18 and 20. All of the appealed claims
further stand rejected under 35 U.S.C. § 112, first paragraph,
as based on a non-enabling disclosure in view of the recited
terms "hydrating" and "cyclizing." Finally, claims 14 and 16
stand rejected under 35 U.S.C. § 112, second paragraph.
According to the examiner, the recitation of "acid/R OH" in18
claim 14, step (b), is unclear. The examiner also argues that
the recitation "R and R to R inclusive are selected from2 4 8
among the values set forth in Table V of the specification"
renders claim 16 indefinite "because it is improper for a
Appeal No. 95-0544
Application No. 07/798,971
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claim to be dependent from the specification" (Answer, page
3).
DISCUSSION
This is not a close case.
Having carefully reviewed the record, including
appellants' "Second Brief on Appeal" (Paper No. 19) and the
Examiner's
Answer (Paper No. 20), we find that the rejections under
35 U.S.C. § 103 and 35 U.S.C. § 112, first and second
paragraphs, do not rise to the level of superficial
plausibility. These rejections are reversed for the reasons
succinctly stated in the "Second Brief on Appeal."
In responding to the rejection of claim 16 under
35 U.S.C. § 112, second paragraph, appellants rely on Ex parte
Moon,
224 USPQ 519 (Bd. App. 1984) (Second Brief on Appeal, pages 12
and 13). The examiner, however, does not even mention
Ex parte Moon in the Answer. This illustrates the egregious
nature of the examiner's prosecution in this application.
The examiner's decision is reversed.
REVERSED
Appeal No. 95-0544
Application No. 07/798,971
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SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
)
WILLIAM F. SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOHN D. SMITH )
Administrative Patent Judge )
Appeal No. 95-0544
Application No. 07/798,971
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Bradley N. Ruben
Hopgood, Calimafde, Kalil,
Blaustein & Judlowe
60 East 42nd St.
New York, NY 10165