08024571 (B.P.A.I. Jun. 12, 1998)

Ex parte MULLER

Board of Patent Appeals and InterferencesJun 12, 1998

08024571 (B.P.A.I. Jun. 12, 1998)

Application for patent filed March 1, 1993.1 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opinion in support of the decision being entered today (1) was not written for publication in a law journal and (2) is not binding precedent of the Board.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. 27 UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte KLAUS-HELMUT MULLER __________ Appeal No. 95-0882 Application 08/024,5711 __________ ON BRIEF __________ Before KIMLIN, GARRIS, and WEIFFENBACH, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal which involves claims 1 through 8, 10 and 11. The only other claim in the application, which is claim 9, stands withdrawn from further consideration by the examiner as being directed to a nonelected invention. Appeal No. 95-0882 Application No. 08/024,571 We note that the amendment correcting minor2 informalities in dependent claims 3, 6 and 7 which accompanied the brief has not been clerically processed. This oversight should be corrected upon return of the application to the jurisdiction of the examiner. 2 The subject matter on appeal relates to a process for preparing sulphonylurea salts by reacting a sulphonamide to form a sulphonamide salt which is then reacted with a carbamate (urethane) to thereby yield the desired salt product. This appealed subject matter is adequately illustrated by independent claim 1, a copy of which taken from the appellant's brief is appended to this decision. The following references are relied upon by the examiner as evidence of obviousness: FÃ¶ry et al. (Fory) 4,690,707 Sep. 1, 1987 Riebel et al. 2,032,398 Jun. 20, 1991 (Riebel) (Canada) Claims 1 through 8, 10 and 11 are rejected under 35 U.S.C.2 Â§ 103 as being unpatentable over Fory in view of Riebel. We cannot sustain this rejection. It is the examiner's basic position that Riebel would have suggested to one with ordinary skill in the art "replacing the intermediate sulphonamide [of Fory] with its salt and reacting it Appeal No. 95-0882 Application No. 08/024,571 3 with the triazine carbamate and expect the same result as in the instant invention, due to the same triazinyl carbamate core" (answer, page 4). We cannot agree. We appreciate that Riebel might have suggested to an artisan with ordinary skill the desirability and thus the obviousness of transforming the sulphonylureas of Fory into sulphonylurea salts of the type defined by the appealed claims and disclosed by Riebel. However, it is our perception that these applied references would have suggested such a transformation via the reaction mechanism taught by Riebel wherein the sulphonylureas are reacted with alkaline metal hydroxides. On the reference evidence of record before us, we discern no teaching or suggestion, and the examiner points to none, which would have motivated the artisan to transform the sulphonylureas of Fory into sulphonylurea salts via the here claimed sulphonamide salt reaction mechanism, which is not disclosed in either applied reference, rather than via the reaction mechanism expressly taught by Riebel. In light of the foregoing, it is our determination that the examiner's obviousness conclusion is based upon impermissible hindsight derived from the appellant's own disclosure rather than some teaching, suggestion or incentive derived from the applied prior art. It follows that we cannot sustain the examiner's Appeal No. 95-0882 Application No. 08/024,571 4 section 103 rejection of claims 1 through 8, 10 and 11 as being unpatentable over Fory in view of Riebel. The decision of the examiner is reversed. REVERSED Edward C. Kimlin ) Administrative Patent Judge ) ) ) ) Bradley R. Garris ) BOARD OF PATENT Administrative Patent Judge ) APPEALS AND ) INTERFERENCES ) ) Cameron Weiffenbach ) Administrative Patent Judge ) Appeal No. 95-0882 Application No. 08/024,571 5 Sprung, Kramer, Schaefer & Briscoe 660 White Plains Road - 4th Floor Tarrytown, NY 10591-5144 Appeal No. 95-0882 Application No. 08/024,571 1 APPENDIX Appeal No. 95-0882 Application No. 08/024,571 2 Appeal No. 95-0882 Application No. 08/024,571 3