Ex parte Taketomi et al.

Board of Patent Appeals and Interferences

Feb 24, 2000

08139861 (B.P.A.I. Feb. 24, 2000)

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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journal and (2) is not binding precedent of the Board.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. 48
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte TAKANAO TAKETOMI, TOSHIAKI SAKAGUCHI
and HIDENORI KUMOBAYASHI
________________
Appeal No. 1996-2919
Application No. 08/139,861
________________
ON BRIEF
________________
Before KIMLIN, WALTZ and KRATZ, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 3-
26, all the claims remaining in the present application. A
copy of claim 23 is appended to this decision.
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The examiner relies upon the following references as
evidence of obviousness:
Tenud 4,021,480 May 03, 1977
Sayo et al. (Sayo) 4,916,252 Apr. 10, 1990
Appellants' claimed invention is directed to a process
for preparing a optically active carnitine ester in accordance
with formula (I). The process entails asymmetrically
hydrogenating the ester halide of formula (II) in the presence
of a ruthenium-optically active phosphine complex defined by
formulae (III), (IV), (VI) and (VII). The ruthenium-optically
active phosphine complex serves as a catalyst for the
reaction. The optically active carnitine ester is an
intermediate in the production of optically active carnitine,
which has medicinal uses.
The present application is a continuation of U.S.
Application No. 07/455,023, filed December 22, 1989. An
appeal was taken to this Board in the parent application and,
in a decision dated August 24, 1993, the Board affirmed the
examiner's rejection under 35 U.S.C. § 103 over prior art that
is presently applied by the examiner. However, the present
claims on appeal are narrower in scope than those before the
Board in the parent application, and the present record
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contains declaration evidence submitted by appellants that was
not considered in the prior appeal.
Appealed claims 3-26 stand rejected under 35 U.S.C. § 103
over Tenud in view of Sayo.
We have thoroughly reviewed the respective positions
advanced by appellants and the examiner. In so doing, we find
that appellants' evidence of nonobviousness outweighs the
examiner's evidence of obviousness. Accordingly, we will not
sustain the examiner's rejection.
To the extent it would have been obvious for one of
ordinary skill in the art to utilize the catalysts disclosed
by Sayo in the reaction of Tenud, we find that appellants'
declaration evidence, particularly the Kumobayashi Declaration
of
January 30, 1995 and the Second Supplemental Declaration of
November 3, 1995, places of record evidence of unexpected
results that has not been adequately refuted by the examiner.
The Kumobayashi Declaration executed January 30, 1995
demonstrates that a catalyst of the appealed claims provides
99% conversion for the reaction in comparison with two other
catalysts of Sayo which result in conversions of only 3%.
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While the declarant characterizes these results as
"unexpected" (page 5 of Declaration), the examiner dismisses
the probative value of the Declaration as only the result of
"routine experimentation to determine the best catalyst for
the hydrogenation of carnitine" (page 4 of Answer). However,
the examiner misapplies the applicable law. It is well
settled that when a reference discloses that a number of
different compounds are effective for a particular purpose, an
applicant has the opportunity to demonstrate with objective
evidence that a selection of a particular compound disclosed
by the reference give unexpected results relative to the other
reference compounds. Character-izing an applicant's discovery
as merely the product of routine experimentation avoids the
issue of whether the applicant's discovery would have been
unexpected to one of ordinary skill in the art. In the
present case, the examiner has not set forth a rationale why
the marked superiority for the claimed catalyst demonstrated
in the Declaration would have been considered expected by one
of ordinary skill in the art.
Appellants' Reply Brief was accompanied with a SECOND
SUPPLEMENTAL DECLARATION executed by Mr. Kumobayashi on
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October 24, 1995. According to appellants, "routine
experimen-tation would have led one to use the Sayo catalyst
with the Sayo substrate rather than the present substrate in
the Tenud reaction, and, thus, routine experimentation would
not have led one to the present invention" (sentence bridging
pages 2 and 3 of Reply Brief). In a paper dated November 27,
1995, the examiner stated that the Reply Brief and the
Declaration "have been entered and considered but no further
response by the Examiner is deemed necessary." However, the
examiner's failure to substan-tively consider the merits of
the Declaration, in and of itself, constitutes reversible
error.
We also note that appellants provide separate arguments
for claims 11-13, 14-19, 20 and 21, 22, 24, and 26 (pages 23
and 24 of principal brief). The examiner's failure to respond
to these separate arguments also constitutes reversible error.
In conclusion, based on the foregoing, the examiner's
decision rejecting the appealed claims is reversed.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
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Application No. 08/139,861
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)
)
)
THOMAS A. WALTZ ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
PETER F. KRATZ )
Administrative Patent Judge )
ECK:clm
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Application No. 08/139,861
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Sughrue, Mion, Zinn, MacPeak & Seas
2100 Pennsylvania Ave., N.W.
Washington, DC 20037-3202
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APPENDIX
23. A process for preparing an optically active
carnitine ester represented by formula (I):
wherein R represents a lower alkyl group having two or more
carbon atoms; and X represents a halogen atom,
which process consists essentially of asymmetrically
hydrogenating a (-trimethylammonium-3-oxabutanoic ester halide
repres ented
by formul
a (II):
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wherein R and X are as defined above,
in the presence of a ruthenium-optically active phosphine
complex as a catalyst,
and then recovering the optically active carnitine ester
represented by formula (I) which has been formed, wherein said
ruthenium-optically active phosphine complex is selected from
the group consisting of a compound represented by formula
(III):
Ru H Cl (R -BINAP) (Q) (III) x y z 2 p1
wherein R -BINAP represents a tertiary phosphine represented1
by formula
(IV):
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R represents a hydrogen atom, a methyl group or a t-butyl1
group;
Q represents a tertiary amine; y is 0, x represents 2, z
represents 4, and p represents 1;
a compound represented by formula (VI):
O
5
Ru(R -BINAP)(OCR ) 1 2 2
(VI)
wherein R -BINAP is as defined above; and R represents a lower1 2
alkyl group or a trifluoromethyl group; and a compound
represented by formula (VII):
[Ru(R -BINAP)MC1 ] X (VII)1 1k R m
wherein R -BINAP is as defined above; M represents Zn, Al, Ti1
or Sn; X represents N(C H ) or CH CO ; in the case that X1 12 5 3 3 2
represents N(C H ) , R is 2 and m is 1, and when M represents2 5 3
Zn, then k is 4, when M represents A1, then k is 5, and when M
represents Ti or Sn, then k is 6; and in the case that X1
represents CH CO , R is 1 and m is 2, and when M represents Zn,3 2
then k is 2, when M represents A1, then k is 3, and when M
represents Ti or Sn, then k is 4.
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