Ex parte REIDER et al.

Board of Patent Appeals and Interferences

Oct 28, 1998

07898348 (B.P.A.I. Oct. 28, 1998)

Application for patent filed June 12, 1992. According1
to appellants, this application is a continuation of
Application No. 07/825,797, filed January 21, 1992; which is a
continuation of Application No. 07/744,664, filed August 9,
1991; which is a continuation of Application No. 07/559,807,
filed July 30, 1990; which is a division of Application No.
07/463,020, filed January 10, 1990; which is a continuation-
in-part of Application No. 06/367,532, filed April 12, 1982;
which is a continuation-in-part of Application No. 06/314,152,
filed October 23, 1981; all of which have been abandoned.
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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journal and (2) is not binding precedent of the Board.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. 37
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte PAUL J. REIDER and EDWARD J. GRABOWSKI
________________
Appeal No. 95-3156
Application No. 07/898,3481
________________
ON BRIEF
________________
Before WINTERS and WILLIAM F. SMITH, Administrative Patent
Judges, and McKELVEY, Senior Administrative Patent Judge.
WINTERS, Administrative Patent Judge.
Appeal No. 95-3156
Application No. 07/898,348
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Appeal No. 95-3156
Application No. 07/898,348
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DECISION ON APPEAL
This appeal was taken from the examiner's decision
rejecting claims 8, 20, 22 and 23, which are all of the claims
remaining in the application.
Claim 22, which is illustrative of the subject matter on
appeal, reads as follows:
22. A process of synthesizing a carbapenem intermediate
of the formula:
comprising:
treating a N-deprotected acetoxy compound of the formula:
Appeal No. 95-3156
Application No. 07/898,348
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wherein R is H, trialkylsilyl, triarylsilyl, diarylalkylsilyl 1
or aryldialkylsilyl, wherein the alkyl portions of said groups
contain 1-4 carbon atoms, and the aryl portions of said groups
are selected from the group consisting of phenyl,
p-nitrobenzylcarbonate or phenyl substituted with one to three
groups selected from C to C alkyl, halo, trifluoromethyl,1 3
amino, cyano and nitro;
R represents C alkyl, C alkenyl, phenyl, phenyl4 1-4 2-4
substituted by one to three groups selected from C to C1 3
alkyl, halo, trifluoromethyl, amino, cyano and nitro,
with a silyl
enolether of the formula:
wherein:
R and R are independently H, C to C alkyl, C to C2 3 1 4 2 4
alkenyl, benzyl or phenethyl; and
R represents benzyl, allyl, C alkyl, or p-nitrobenzyl,5 1-4
in the presence of a Lewis acid selected from the group
consisting of zinc halide, boron trifluoride etherate,
titanium tetra-chloride, stannic chloride and aluminum
chloride
Appeal No. 95-3156
Application No. 07/898,348
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or a silylating agent having sufficient reactivity to
yield said intermediate.
The references relied on by the examiner are:
Liu et al. (Liu) 4,287,123 Sep. 1, 1981
Christensen et al. (Christensen) 4,290,947 Sep. 22, 1981
T.H. Chan et al. (Chan), ""-t-Butylation of Aldehydes and
Ketones by the Friedel-Crafts Alkylation of Trimethylsilyl
Enol Ethers," Tetrahedron Letters no. 48, 4183-86 (Pergamon
Press Ltd. 1977)
Ian Paterson, "-Alkylation of Ketones, Esters, and Lactones
Zinc Bromide-Catalysed Alkylation of o-Silylated Enolates, A
Synthesis of (±)-AR-Turmerone. Tetrahedron Letters no. 17,
1519-20 (Pergamon Press Ltd. 1979)
M.T. Reetz (Reetz I), Chemical Abstract 95:42446s (1981)
Manfred T. Reetz et al. (Reetz II), tert-Alkylation of Ketones
and Aldehydes, 17 Angew. Chem. Int. Ed. Engl. no. 1, pg. 48-9
(1978)
Jerald K. Rasmussen, "O-Silylated Enolates - Versatile
Intermediates for Organic Synthesis," Synthesis 91, 98 and 99
(Feb. 1977)
S. Oida, "Penems, Synthetic Approach to Thienamycin
Analogues," Ch. 27, pp. 331-48 (1958).
The appealed claims stand rejected as follows: (1)
claims 8 and 22 under 35 U.S.C. § 103 as unpatentable over
Chan, Paterson, Reetz I, Reetz II, or Rasmussen; (2) claim 20
under 35 U.S.C. § 103 as unpatentable over Chan, Paterson,
Reetz I, Reetz II, or Rasmussen, either of those "primary"
references considered in view of Oida, Christensen, or Liu;
Appeal No. 95-3156
Application No. 07/898,348
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and (3) claim 23 under 35 U.S.C. § 103 as unpatentable over
Chan, Paterson, Reetz I, Reetz II, or Rasmussen, either of
those "primary" references considered in view of Christensen
or Liu.
Appeal No. 95-3156
Application No. 07/898,348
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DISCUSSION
On consideration of the record, we find that the
examiner's obviousness rejections are predicated on case law
enunciated in In re Durden, 763 F.2d 1406, 226 USPQ 359 (Fed.
Cir. 1985) and in In re Albertson, 332 F.2d 379, 141 USPQ 730
(CCPA 1964). The rationale of those cases, however, has been
overtaken by events. See In re Ochiai, 71 F.3d 1565, 37
USPQ2d 1127, 1132-33 (Fed. Cir. 1995); and In re Brouwer, 77
F.3d 422, 425-26, 37 USPQ2d 1663, 1666 (Fed. Cir. 1995). We
reverse the examiner's rejections based on Ochiai and Brouwer.
REVERSED
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
)
)
WILLIAM F. SMITH ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
FRED E. McKELVEY )
Senior, Administrative Patent Judge )
Appeal No. 95-3156
Application No. 07/898,348
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clm
Appeal No. 95-3156
Application No. 07/898,348
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Paul J. Reider
Merck & Co., Inc.
Patent Dept.
P.O. Box 2000
Rahway, NJ 07065-0907