Ex parte Misra et al.

Board of Patent Appeals and Interferences

Apr 28, 1998

07772830 (B.P.A.I. Apr. 28, 1998)

Application for patent filed October 7, 1991.1
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte RAJ N. MISRA, JAGABANDHU DAS,
STEVEN E. HALL, WEN-CHING HAN,
PHILIP M. SHER
and PHILIP D. STEIN
__________
Appeal No. 94-0820
Application 07/772,8301
__________
ON BRIEF
__________
Before SOFOCLEOUS, JOHN D. SMITH and ELLIS, Administrative Patent
Judges.
ELLIS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims
1 through 19, all the claims pending in the application.
Claims 1, 8 and 19 are illustrative of the subject matter
on appeal and are attached as an appendix to this decision.
Appeal No. 94-0820
Application 07/772,830
We note that the Answer contains a typographical error in2
the statement of the rejection. Answer, p. 2. The examiner has
inadvertently stated that claims 1-9 are rejected over Misra in
view of Jones, rather than claims 1-19. However, it is apparent
from the final Office action (Paper No. 6) that the examiner
intends the rejection to include all the claims. It is also
apparent from their Brief, that the appellants understood the
rejection to encompass all the claims. Brief, pp. 1 and 3.
Accordingly, for purposes of this appeal, we have considered the
issues as they apply to claims 1-19.
2
The references relied on by the examiner are:
Ohtani et al. (Ohtani) 5,043,451 Aug. 27, 1991
Jones et al. (Jones) 5,077,309 Dec. 31, 1991
Misra et al. (Misra) 5,100,889 Mar. 31, 1992
Claims 1 through 18 stand rejected under 35 U.S.C. § 103
as being unpatentable over Misra in view of Ohtani.
Claims 1 through 19 stand rejected under 35 U.S.C. § 103
as being unpatentable over Misra in view of Jones.2
We have carefully considered the respective positions of
the appellants and the examiner and find ourselves in substantial
agreement with that of the appellants. Accordingly, we reverse
both rejections for the reasons set forth in the Brief.
According to the examiner:
The claimed compounds differ solely from those of
Misra in the specific cyclic moiety R -C-C-R3 4
bridging the two claims. Misra has a 7-oxa
bicycloheptyl moiety. The claims recite numerous
rings including bornane, norbornane, bicyclooctane
and cycloalkyl. The secondary references, in
Appeal No. 94-0820
Application 07/772,830
3
analogous compounds teach numerous ring system
[sic, systems] including that of Misra and the
claims. It would be [sic, would have been]
obvious to one skilled [sic, one of ordinary
skill] in the art to substitute the ring system of
Misra with one of the prior art and obtain the
desired results {Answer, para. bridging pp. 2-3].
We find the examiner’s position untenable.
As we understand the rejection, the examiner is urging that
the R -C-C-R moiety of the claimed compound is merely a “bridge”3 4
and, therefore, its presence does not affect the biological
properties of the compound. However, in reviewing the
references, we do not find any teachings with respect to the
referenced moiety acting a “bridge,” nor have any such teachings
been pointed out by the examiner. Thus, it is difficult for us
to discern on what basis the examiner reached his conclusion.
Accordingly, on this record, we find that the examiner has not
established, through the use of factual evidence, or sound
scientific reasoning, that the combined limitations would have
been obvious to one of ordinary skill in the art at the time
the application was filed. A conclusion of obviousness must be
based on facts, and not unsupported generalities. In re Freed,
425 F.2d 785, 788, 165 USPQ 570, 572 (CCPA 1970); In re Warner,
379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967).
Appeal No. 94-0820
Application 07/772,830
4
The decision of the examiner is reversed.
REVERSED
MICHAEL SOFOCLEOUS )
Administrative Patent Judge )
)
)
)
JOHN D. SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOAN ELLIS )
Administrative Patent Judge )

Appeal No. 94-0820
Application 07/772,830
5
Burton Rodney
Bristol-Myers Squibb Company
P. O. Box 4000
Princeton, NJ 08543-4000
JE/cam
Appeal No. 94-0820
Application 07/772,830
6
APPENDIX