Ex parte WU et al.

Board of Patent Appeals and Interferences

Jul 27, 2001

08348385 (B.P.A.I. Jul. 27, 2001)

1
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not written for publication and is not binding precedent of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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte CHENGJIU WU and JIANHUI SHAN

___________
Appeal No. 1998-2334
Application No. 08/348,385
__________
ON BRIEF
_________
Before GARRIS, LIEBERMAN, and SMITH, JEFFREY, Administrative
Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection
of claims 1-28. The only other claims in the application,
which are claims 29 and 30, have been allowed.
The subject matter on appeal relates to a method for
preparing unsymmetrical 2,7-disubstituted fluoren-9-one
derivatives. This appealed subject matter is adequately
Appeal No. 1998-2334
Application No. 08/348,385
The appealed claims will stand or fall together; see1
page 5 of the brief and page 3 of the answer as well as 37 CFR
§ 1.192(c)(7)(8)(July 1996). Accordingly, in resolving the
issues before us on this appeal, we need focus only on claim 1
which is the broadest independent claim on appeal.
2
illustrated by independent claim 1, a copy of which taken from
the appellants’ brief is appended to this decision.
The reference set forth below is applied by the examiner
in the section 102 rejection before us:
Wu et al. (Wu) 5,354,511 Oct. 11,
1994
All of the appealed claims stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Wu.1
We refer to the brief and reply brief and to the answer
for a complete exposition of the opposing viewpoints expressed
by the appellants and by the examiner concerning the above
noted rejection.
OPINION
We will sustain this rejection for the reasons set forth
in the answer and below.
The examiner regards the here claimed method as being
clearly anticipated by the Wu patent. The appellants’
contrary viewpoint is most succinctly expressed in the last
Appeal No. 1998-2334
Application No. 08/348,385
3
full paragraph on page 2 of the reply brief which reads as
follows:
U.S. Patent 5,354,511 produces a compound analogous
to C by a method involving an organic transformation
reaction followed by an alkylation. The closest
that the ‘511 patent comes to the present invention
is an intermediate step shown bridging columns 5 and
6 where the patentee uses a nucleophilic reagent of
the formula D-Z(i.e. NaSH) in the presence of an
aprotic solvent(i.e. DMF), but they do not produce a
compound according to the formula C of this
invention because under no circumstances do the A/D
linkages of this invention form a compound having H N2
and SH linkages as shown by the ‘511 patent at
column 5-6. In order to attain a compound according
to formula C of this invention with the proper A/D
linkages, the patentee must then react their
intermediate with CH I (see the bottom of column 6). 3
Applicant’s method does not react an intermediate
with CH I.3
We do not consider the appellants’ position to be well
taken for a number of reasons. In the first place, as
correctly noted by the examiner in the answer, the appealed
claim 1 term, “comprising” permits the inclusion of other
steps in the appellants’ claimed method. In re Baxter, 656
F.2d 679, 686, 210 USPQ 795, 802 (CCPA 1981). In addition, we
perceive no recitation in appealed claim 1, and the appellants
point to none, which excludes from the here claimed method the
reaction disclosed by Wu at the bottom of column 6 between
patentee’s intermediate and CH I. On the other hand, pages3
Appeal No. 1998-2334
Application No. 08/348,385
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14-16 of the subject specification plainly disclose that the
substitution reaction of the appellants’ invention may include
both leaving groups, rather than just one leaving group,
whereby both the A and A’ groups in the precursor compound D
may be sequentially replaced. Indeed, the reaction scheme
shown at the top portion of specification page 16 is very
similar to the reaction scheme shown by Wu at the bottom of
columns 5 and 6 including the specification page 16 reaction
of an intermediate with R I and patentee’s bottom mostF
reaction in column 6 of an intermediate with CH I. 3
It is axiomatic that, in proceedings before the Patent
and Trademark Office, claims in an application are to be given
their broadest reasonable interpretation consistent with the
specification and that claim language should be read in light
of the specification as it would be interpreted by one of
ordinary skill in the art. In re Sneed, 710 F.2d 1544, 1548,
218 USPQ 385, 388 (Fed. Cir. 1983). When so interpreted,
appealed claim 1 encompasses intermediate reactions in forming
a compound of the formula C for the reasons discussed above
including especially the appellants’ disclosure of
intermediate reactions at specification pages 14-16. As a
consequence, we cannot agree with the appellants’ above quoted
Appeal No. 1998-2334
Application No. 08/348,385
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contention that their “method [i.e., the method defined by
appealed independent claim 1] does not react an intermediate
with CH I.” 3
It follows that we will sustain the examiner’s section
102 rejection of claims 1-28 as being anticipated by Wu.
The decision of the examiner is affirmed.
Appeal No. 1998-2334
Application No. 08/348,385
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
Bradley R. Garris )
Administrative Patent Judge )
)
)
)
Paul Lieberman ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Jeffrey T. Smith )
Administrative Patent Judge )
BRG:tdl
Appeal No. 1998-2334
Application No. 08/348,385
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Colleen D. Szuch
P.O. Box 2245
101 Columbia Road
Morristown, NJ 07962
Appeal No. 1998-2334
Application No. 08/348,385
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APPENDIX

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