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