Appeal No. 1996-2321
Application No. 08/137,228
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
4The examiner has applied McMurry, Organic Chemistry, p.
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
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