Ex parte THOTTATHIL et al. - Page 3




              Appeal No.  2001-0665                                                                                          
              Application 08/439,920                                                                                         

                                                       Deliberations                                                         
                      Our deliberations in this matter have included evaluation and review of the following                  
              materials: (1) the instant specification, including all of the claims on appeal; (2)  applicants’              
              Appeal Brief; (3) the Examiner’s Answer; and (4) the above-cited references.                                   
                      On consideration of the record, including the above-listed materials, we reverse the                   
              examiner’s rejection under 35 U.S.C. § 103.                                                                    


                                                        Discussion                                                           
                      The examiner argues that Holton discloses every feature of appellants’ claimed                         
              intermediate except for appellants’ 1-methyl-1-methoxyethoxy group at the 20 position on                       
              the C-13 sidechain.  The examiner points out that Holton discloses a “hydroxy protecting                       
              group,” generically, at that position, as well as specific protecting groups such as alkyl,                    

              methoxymethyl, ethoxyethyl, benzyloxymethyl, trimethylsilyl, and triethylsilyl.  The examiner                  
              also refers to Holton’s disclosure at column 6, lines 31 through 35 that                                       
                      A variety of protecting groups for the hydroxyl group and the synthesis                                
                      thereof may be found in “Protective Groups in Organic Synthesis” by       T.                           
                      W. Green, John Wiley and Sons, 1981.                                                                   


                      With respect to the ancillary reference, Greene, the examiner argues that this                         
              reference discloses the art-recognized equivalence of a number of hydroxy protecting                           
              groups, including, inter alia, methyl, methoxymethyl, ethoxyethyl, benzyloxymethyl,                            

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