Ex parte JOMMI

Board of Patent Appeals and Interferences

Sep 29, 1998

08070869 (B.P.A.I. Sep. 29, 1998)

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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(2) is not binding precedent of the Board.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. 30
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte GIANCARLO JOMMI
and DARIO CHIARINO
______________
Appeal No. 95-4706
Application 08/070,8691
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ON BRIEF
_______________
Before RONALD H. SMITH, PAK and WARREN, Administrative Patent Judges.
WARREN, Administrative Patent Judge.
Decision on Appeal and Opinion
This is an appeal under 35 U.S.C. ' 134 from the decision of the examiner refusing to allow
claims 5 through 7 and 11, all of the claims now pending in the application.2
The claimed processes prepare certain 5-(4-substituted-phenyl)-oxazolidion-2-ones via the
cyclization of certain 1-(4-substituted-phenyl)-2-alkoxycarbonylamino-propanes wherein the
substituents on the phenyl moiety are methylthio, methylsulfoxy, methylsulfonyl or a nitro group. The

1 Application for patent filed June 3, 1993. According to appellants, this application is a division of
application 07/841,075, filed February 25, 1992, now U.S. Patent 5,243,056 (>056 patent), issued
September 7, 1993, which application is a division of application 07/162,247, filed February 29, 1988,
now U.S. Patent 5,105,009 (>009 patent), issued April 14, 1992, which application is a continuation of
application 06/616,086, filed June 1, 1984, now abandoned.
2 In the amendment of March 10, 1995 (Paper No. 23), appellants canceled claims 4 and 10, added
claim 11 and amended claims 5 and 6 to depend on claim 11.
Appeal No. 95-4706
Application 08/070,869
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oxazolidion-2-one products are encompassed by the claims of the parent >056 patent and the herein
claimed processes are a step in the processes of forming fluoropropane derivatives claimed in the
grandparent >009 patent (see supra note 1). According to the examiner, Saari3 discloses a cyclization
process to prepare a 5-(3-hydroxy-phenyl)-oxazolidion-2-one in which the intermediate 1-(3-
hydroxy-phenyl)-2-alkoxycarbonylamino-propane is formed in situ. Thus, the examiner contends that
the claimed invention would have been obvious under 35 U.S.C. '103 because A[o]ne of ordinary skill
would reasonably have expected analogous reactants, differing only in substitution remote from the
reaction sites, also to cyclize under the same conditions to produce the expected 2-oxalidinones [sic]
with a reasonable expectation of success,@ relying on the authority of In re Durden, 763 F.2d 1406,
226 USPQ 359 (Fed. Cir. 1985) (answer, page 6).
In the absence of an analysis establishing the prima facie obviousness of the claimed invention
as a whole, thus including consideration of the non-obvious oxazolidion-2-one products obtained by
the claimed processes, the examiner=s rejection cannot be sustained. In re Brouwer, 77 F.3d 422,
426, 37 USPQ2d 1663, 1666 (Fed. Cir. 1996); In re Ochiai, 71 F.3d 1565, 1569-71, 37 USPQ2d
1127, 1131-32 (Fed. Cir. 1995).
The examiner=s decision is reversed.
Reversed

3 Saari is listed at page 3 of the answer.
Appeal No. 95-4706
Application 08/070,869
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RONALD H. SMITH )
Administrative Patent Judge )
)
)
)
CHUNG K. PAK ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
CHARLES F. WARREN )
Administrative Patent Judge )
John J. Maitner, Esq.
Group Patent Counsel
Schering-Plough Corporation
2000 Galloping Hill Road
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