Ex parte Coates et al.

Board of Patent Appeals and Interferences

Mar 30, 2000

08137228 (B.P.A.I. Mar. 30, 2000)

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for publication in a law journal and (2) is not binding precedent of the Board.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
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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