Ex parte Coates et al.Download PDFBoard of Patent Appeals and InterferencesMar 30, 200008137228 (B.P.A.I. Mar. 30, 2000) Copy Citation 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opinion in support of the decision being entered today (1) was not written for publication in a law journal and (2) is not binding precedent of the Board.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. 48 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte IAN H. COATES, ALEXANDER W. OXFORD, PETER C. NORTH, THOMAS MILLER, ANTHONY D. BAXTER and KEVIN I. HAMMOND ____________ Appeal No. 1996-2321 Application No. 08/137,228 ____________ HEARD: March 21, 2000 ____________ Before OWENS, WALTZ, and KRATZ, Administrative Patent Judges. WALTZ, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 from the examiner’s refusal to allow claims 2, 6, 8 through 10 and 12 as amended subsequent to the final rejection (see the amendment dated Feb. 13, 1995, Paper No. 33, entered as per the advisory Action dated Mar. 2, 1995, Paper No. 35, and the amendment accompanying the Brief dated May 15, 1995, Paper No. Appeal No. 1996-2321 Application No. 08/137,228 All reference to the examiner’s Answer will be to the1 Answer dated Jan. 6, 2000, Paper No. 45. The Answer refers to only pages 753-754 of Challis (see2 page 2) but the Challis reference of record contains pages 753, 754 and 848. 2 37, entered as noted on page 2 of the Answer). Claim 13 is1 the only other claim remaining in this application and has been allowed by the examiner (Answer, page 1). According to appellants, the invention is directed to a process for preparing an N-alkylated pyrido [4,3-b] indole of formula (I) by reacting the pyrido [4,3-b] indole of formula (II) with an alcohol of formula (III) in the presence of an acid at an elevated temperature (Brief, pages 2-3). Claim 12 is illustrative of the subject matter on appeal and a copy of this claim is attached as an Appendix to this decision. The examiner has relied upon the following reference as evidence of obviousness: Challis et al. (Challis), The Chemistry of Amides, pp. 753-54 and 848, Interscience Publishers, 1970.2 Appellants rely upon the following reference in rebuttal to the examiner’s evidence of obviousness (Brief, page 7): Bredereck et al. (Bredereck), Chem. Ber., 92, 329 (1959). Appeal No. 1996-2321 Application No. 08/137,228 763 F.2d 1406, 226 USPQ 359 (Fed. Cir. 1985).3 3 All of the claims on appeal stand rejected under 35 U.S.C. § 103 as unpatentable over Challis (Answer, page 2). We reverse this rejection for reasons which follow. OPINION In the rejection of the claims on appeal, the examiner finds that “Challis teaches that amides can be N-alkylated with alcohols in the presence of trace amounts of mineral acid. Appellants claim the N-alkylation of an amide with an acid.” (Answer, paragraph bridging pages 2-3). Although the examiner recognizes that the amide starting material and N- alkylated product differ from those taught by Challis, the examiner concludes that the application of an “old process” using different, yet analogous, reactants “with nothing more than expected results ensuing is obvious,” citing In re Durden (Answer, page 3).3 However, we agree with appellants’ arguments on pages 5-7 of the Brief that the examiner’s factual findings are in error since Challis only relates to the alkylation of “alkyl amides” Appeal No. 1996-2321 Application No. 08/137,228 The examiner has applied McMurry, Organic Chemistry, p.4 795, Brooks/Cole Publishing Co., 1984, to show that it is well known that a lactam is a cyclic amide (Answer, page 3, and Supplemental Answer, pages 1-2). This reference has not been listed in the prior art cited by the examiner and does not appear in the statement of the rejection in the Answer. Accordingly, we will not consider this reference as part of the examiner’s evidence of obviousness. See In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970); Ex parte Raske, 28 USPQ2d 1304, 1304-05 (Bd. Pat. App. & Int. 1993). 4 and not “amides” in general, much less the specific lactam starting material recited in claim 12 on appeal (see Challis, page 753). The examiner has not cited any objective evidence4 or compelling reasons to support the conclusion that “a cyclic amide [a lactam] ... would thus be expected to react in a manner analogous to an acyclic amide.” (Answer, page 4). Furthermore, Challis does not disclose or teach that alkylation occurs at the nitrogen of the amide when alkylated with alcohols but merely teaches that “akylation” occurs, with reference to footnote 1b (i.e., with reference to Bredereck, see Challis, pages 754 and 848). Appellants state, on page 7 of the Brief, that Bredereck only discloses the reaction of a formamide with an alcohol to form a C-alkylation product, with no teaching of any alkylation of the amide nitrogen. The Appeal No. 1996-2321 Application No. 08/137,228 In re Ochiai, 71 F.3d 1565, 1570, 37 USPQ2d 1127, 1131-325 (Fed. Cir. 1995); see also In re Brouwer, 77 F.3d 422, 425-26, 37 USPQ2d 1663, 1666 (Fed. Cir. 1996). 5 examiner has not contested appellants’ interpretation of Bredereck in the Answer. Finally, with respect to the obviousness of “old processes” using different but analogous reactants, our reviewing court has stated: The examiner erred by indulging in an essentially hindsight comparison of the functioning of the new acid in claim 6 as a precursor to the claimed cephem with that of other acids in the prior art processes that produced other cephems. Such a comparison uses Ochiai’s specification as though it were prior art in order to make the claim to a method that uses the nonobvious acid to make the nonobvious cephem appear to be obvious. Second, the examiner incorrectly drew from Durden, a case turning on specific facts, a general obviousness rule: namely, that a process claim is obvious if the prior art references disclose the same general process using “similar” starting materials [footnote omitted]. No such per se rule exists.5 Similarly to Ochiai and Brouwer, supra, the examiner in this appeal has not made the particularized fact-intensive inquiry required by 35 U.S.C. § 103 but has instead grounded the rejection on the supposedly controlling effect of Durden, supra. As noted by the court in Ochiai and Brouwer, reliance Appeal No. 1996-2321 Application No. 08/137,228 6 on per se rules of obviousness is legally incorrect and the examiner must establish that the invention as claimed would have been obvious over the cited prior art, based on the specific comparison of that prior art with the claim limitations. In re Ochiai, 71 F.3d at 1572, 37 USPQ2d at 1133. For the foregoing reasons, we find that the examiner has not established a prima facie case of obviousness in view of the reference evidence. Because we reverse the examiner’s rejection on the basis of failure to establish a prima facie case of obviousness, we need not discuss the sufficiency of the showing of unexpected results (see the Brief, pages 8-10, and the Answer, page 6). In re Geiger, 815 F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir. 1987). Accordingly, the rejection of claims 2, 6, 8-10 and 12 under 35 U.S.C. § 103 as unpatentable over Challis is reversed. The decision of the examiner is reversed. REVERSED TERRY J. OWENS ) Administrative Patent Judge ) Appeal No. 1996-2321 Application No. 08/137,228 7 ) ) ) ) BOARD OF PATENT THOMAS A. WALTZ ) APPEALS Administrative Patent Judge ) AND ) INTERFERENCES ) ) ) PETER F. KRATZ ) Administrative Patent Judge ) lp Appeal No. 1996-2321 Application No. 08/137,228 8 RICHARD E. FICHTER BACON & THOMAS 625 SLATERS LANE, 4TH FLOOR ALEXANDRIA, VA 22314 APPENDIX Appeal No. 1996-2321 Application No. 08/137,228 10 Leticia APJ WALTZ APJ OWENS APJ KRATZ DECISION: REVERSED Send Reference(s): Yes No or Translation (s) Panel Change: Yes No Index Sheet-2901 Rejection(s): Prepared: February 6, 2001 Draft Final 3 MEM. CONF. Y N OB/HD GAU PALM / ACTS 2 / BOOK DISK (FOIA) / REPORT Copy with citationCopy as parenthetical citation