Ex parte Shiragami et al.

Board of Patent Appeals and Interferences

Oct 31, 2000

08161071 (B.P.A.I. Oct. 31, 2000)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board

Paper No. 67

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte HIROSHI SHIRAGAMI,
YASUO IRIE, and NAOHIKO YASUDA
__________

Appeal No. 1997-0481
Application No. 08/161,071
__________

ON BRIEF
__________

Before WINTERS, ROBINSON, and ADAMS, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134 from the examiner’s
final rejection of claims 19, 20, 23, and 24, which are all the claims pending in the
application.
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Claim 19 is illustrative of the subject matter on appeal and is reproduced
below:
19. A process for obtaining a 2’,3’-dideoxy-2’,3’-didehydronucleoside of
formula (VIII):

wherein B is an unsubstituted or 5-substituted uracil residue bound at its 1-position,
and R2 is a hydrogen atom, an acyl group, an aralkyl group, or a silyl group, said
process comprising reacting, with an acid anhydride, a nucleoside derivative of
formula (VII):

wherein R1 is an alkyl group having 1 to 12 carbon atoms and B is identical to the
uracil residue of formula (VIII).

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Application No. 08/161,071

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The reference relied upon by the examiner is:

Eastwood et al. (Eastwood), “The Conversion of 2-Dimethylamino-1, 3-Dioxolans
into Alkenes,” Tetrahedron Letters, Vol. 60, pp. 5223-224 (1970)

GROUND OF REJECTION

Claims 19, 20, 23, and 24 are rejected under 35 U.S.C. § 103 as obvious
over Eastwood.
We reverse.
DISCUSSION
In reaching our decision in this appeal, we have given careful consideration
to the appellants’ specification and claims, and to the respective positions
articulated by the appellants and the examiner. We make reference to the
Examiner’s Answer1 for the examiner’s reasoning in support of the rejection. We
further reference appellants’ Brief2 for the appellants’ arguments in favor of
patentability. We note the examiner’s communication3 denying entry of appellants’
Reply Brief4, appellants did not petition for entry of the Reply Brief. Accordingly, we
will not consider the Reply Brief.
We also note appellants’ Request for Oral Hearing5 and appellants’
Confirmation of Oral Hearing6. In the Confirmation of Oral Hearing, appellants’

1 Paper No. 61, mailed March 7, 1996.
2 Paper No. 60, received December 1, 1995.
3 Paper No. 64, mailed July 31, 1996.
4 Paper No. 63, received May 2, 1996.
5 Paper No. 62, received May 2, 1996.
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representative states “undersigned counsel represents he will personally appear on
October 10, 2000, at 9:00 a.m., to present oral arguments.” This panel
convened at 9:00 a.m. on October 10, 2000 to hear appellants’ oral argument,
however, appellants’ representative did not appear for this hearing. Accordingly,
our decision is based on appellants’ Brief.

THE REJECTION UNDER 35 U.S.C. § 103:
The initial burden of presenting a prima facie case of obviousness rests on
the examiner. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992). The examiner states (Answer, page 3) that “[i]t would have been
obvious to one of ordinary skill in the art to have used the reaction method
described by Eastwood et al. to obtain the 2’, 3’- dideoxy-2’, 3’-
didehydronucleoside of the instant invention.” We note that the Eastwood reference
makes no mention of the specific uracil compounds claimed by appellants. Thus, it
appears that while not expressly citing the authority, the examiner rests her prima
facie case of obviousness on In re Durden, 763 F.2d 1406, 1410, 226 USPQ 359,
361 (Fed. Cir. 1985).
These facts are similar to those found in In re Ochiai, 71 F.3d 1565, 37
USPQ2d 1127 (Fed. Cir. 1996). The Ochiai court summarized the Board’s position
that
[w]e are not here concerned with the patentability of the starting
materials, the final compounds or other processes of

6 Paper No. 66, received July 11, 2000.
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making the [cephem] compounds. We are concerned only with the
claimed process and the patentability thereof. Cases such as In re
Larsen, 292 F.2d 531, 130 USPQ 209 (CCPA 1961); In re Albertson,
332 F.2d 379, 141 USPQ 730 (CPA 1964) and, particularly, In re
Durden …all of which were directed to processes of making chemical
compounds, are controlling herein… [modification original].

Ochiai, 71 F.3d at 1568, 37 USPQ2d at 1130.

However, the court stated in Ochiai, 71 F.3d at 1572, 37 USPQ2d at 1133:
[A]s we clearly indicated in In re Dillon, a recent in banc decision,
‘[w]hen any applicant properly presents and argues suitable method
claims, they should be examined in light of all … relevant factors, free
from any presumed controlling effect of Durden’ or any other
precedent. 919 F.2d 688, 695, 16 USPQ2d 1897, 1903 (Fed. Cir.
1990)(in banc), cert. denied, 500 U.S. 904 (1991).

In this case, the present claims are not directed to the process of reacting 2-
alkoxy-1,3-dioxolans with an acid anhydride, as taught by the reference. Rather, the
claims are directed to a process involving uracil derivatives.
Therefore, having compared appellants’ claims, limited as they are to the use
of a particular nonobvious starting material for making a particular nonobvious end
product, to the prior art of record, we reverse the rejection of claims 19, 20, 23, and
24 as an incorrect conclusion reached by incorrect methodology. Compare, Ochiai,
71 F.3d at 1572, 37 USPQ2d at 1133.
Having determined that the examiner has not established a prima facie case
of obviousness, we find it unnecessary to discuss the Shiragami7 reference and
corresponding unexpected results, the Ineyama Declaration executed July

7 Shiragami et al. (Shiragami), “Synthesis of 2’, 3’-Dideoxyuridine via
deoxygenation of 2’,3’-O-(methoxymethylene)uridine,” J. Org. Chem., Vol. 53, pp.
5170-173 (1988).
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19, 1993, or the Ineyama Declaration executed August 9, 1994, all relied on by
appellants to rebut any such prima facie case.
REVERSED

)
Sherman D. Winters )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Douglas W. Robinson )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Donald E. Adams )
Administrative Patent Judge )

DEA/cam
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