Ex parte Garcia et al.

Board of Patent Appeals and Interferences

Jun 16, 1998

08052212 (B.P.A.I. Jun. 16, 1998)

Application for patent filed April 23, 1993. According1
to appellants, this application is a continuation-in-part of
Application No. 07/696,222, filed May 6, 1991, now U.S. Patent
No. 5,231,190, issued July 27, 1993.
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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journal and (2) is not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte PAULINA P. GARCIA, JOHN W. LEE, JOHN L. MARSHALL,
DONALD A. McGOWAN, ANTHONY J. PUTTICK, THOMAS K. SPENCER,
STEPHEN G. STROUD, STEPHEN J. TELFER and MICHAEL J. ZURAW
________________
Appeal No. 95-4358
Application No. 08/052,2121
________________
ON BRIEF
________________
Before SOFOCLEOUS, GARRIS and WARREN, Administrative Patent
Judges.
SOFOCLEOUS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-4358
Application No. 08/052,212
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This is an appeal from the final rejection of claims 1 to
13, 46 and 47, all the claims remaining in the application.
The subject matter on appeal is directed to a process for
the preparation of a squarylium compound.
In the Brief, appellants urge that claims 7, 8, 46 and 47
and claims 1 to 6 and 9 to 13 stand or fall together as
grouped. Claim 1 is sufficiently representative of the claims
on appeal and reads as
follows:
1. A process for
the preparation
of a squarylium
compound of the
formula:
wherein Q and Q are each independently an aromatic1 2
heterocyclic nucleus such that in the compounds of formulae
Q CH R and Q CH R the methylene hydrogens are active hydrogens,1 1 2 22 2
and R and R are each independently a hydrogen atom or an1 2
aliphatic or cycloaliphatic group,
Appeal No. 95-4358
Application No. 08/052,212
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which process comprises reacting a squaric acid
derivativ e of the
formula:
wherein Q and R are as defined above, with a compound of the1 1
formula Q CH R .2 22
The references relied upon by the examiner are:
Gravesteijn et al. (Gravesteijn) 4,508,811 Apr. 2, 1985
Detty 4,916,127 Apr. 10, 1990
Jerry March, Advanced Organic Chemistry: Reactions,
Mechanisms, and Structure 326-27 (3d ed., John Wiley & Sons,
New York 1985)
Appeal No. 95-4358
Application No. 08/052,212
-4-
Claims 1 to 13, 46 and 47 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Gravesteijn and Detty in view
of March.
After having reviewed the references in light of the
arguments raised by appellants, we find that we cannot sustain
these rejections for the reasons set forth in appellants'
Brief.
Appellants urge that the squaric acid derivatives of
formula II of claim 1 are novel and unobvious compounds as
shown by the allowance of claims to those compounds in
appellants' parent application, now U.S. Patent No. 5,231,190.
The claimed process prepares a known squarylium compound by
reacting the novel and unobvious squaric acid derivative of
formula II of claim 1 with a known heterocyclic compound.
Under these circumstances, we agree with appellants that the
claimed process is patentable. See
In re Ochiai, 71 F.3d 1565, 1570, 37 USPQ2d 1127, 1131 (Fed.
Cir. 1995); In re Brouwer, 77 F.3d 422, 425-26, 37 USPQ2d
1663, 1666 (Fed. Cir. 1995).
The examiner acknowledges that the prior art starting
compounds of Gravesteijn and Detty are not identical to
Appeal No. 95-4358
Application No. 08/052,212
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appellants' squaric acid derivatives of formula II of claim 1.
However, the examiner urges that the reactive portions of
Gravesteijn and Detty's compounds are identical to the
reactive portions of appellants' compounds. Essentially, it
is the examiner's position that the references teach the
generic process of preparing a squarylium compound, but do not
teach the specific squaric acid derivatives of formula II of
claim 1. On pages 5 and 6 of the Answer, the examiner shows
how the process of Gravesteijn would yield a squaric acid
derivative of formula II of claim 1 as a non-isolated
intermediate. This, in our view, is not sufficient to show
that the claimed process is obvious since Gravesteijn does not
recognize or isolate the intermediate. Cf. Pfizer, Inc. v.
International Rectifier Corp., 545 F.Supp. 486, 508, 207 USPQ
397, 414 (C.D. Cal. 1980), aff'd. 685 F.2d 357, 217 USPQ 39
(9th Cir. 1982).
REVERSED
MICHAEL SOFOCLEOUS )
Administrative Patent Judge )
)
)
)
BRADLEY R. GARRIS ) BOARD OF PATENT
Appeal No. 95-4358
Application No. 08/052,212
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Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
CHARLES F. WARREN )
Administrative Patent Judge )
Appeal No. 95-4358
Application No. 08/052,212
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Polaroid Corp.
Patent Dept.
549 Technology Square
Cambridge, MA 02139