Appeal No. 2003-0855 Page 4
Application No. 09/147,675
(3) the Examiner's Answer (Paper No. 28); and (4) the above-cited Jakupovic
reference.
On consideration of the record, including the above-listed materials, we reverse
the rejection of claims 3 through 19 under 35 U.S.C. § 103(a) as unpatentable over
Jakupovic. Additionally, we recommend that the examiner evaluate the patentability of
applicant's claims in light of U.S. Patent No. 5,482,934.
The Examiner's Rejection
In the R/S-epimer mixture of compounds of formula I recited in claim 17, variable
R1 is "3-8C-cycloalkyl" attached at position 22 of the fused ring system. Likewise, claim
8 recites a process for preparing an R/S-epimer mixture of a specific compound, and for
increasing the proportion of R-epimer in that mixture, where the specific compound has
a cyclohexyl group at position 22 of the fused ring system. Having carefully reviewed
the Jakupovic reference in its entirety, we agree with applicant that Jakupovic
constitutes insufficient evidence to support a conclusion of obviousness of claims which
require that "3-8C-cycloalkyl," or cyclohexyl, be attached at position 22 of the fused ring
system.
In a nutshell, the examiner has not established that Jakupovic discloses or
suggests a process for preparing the same compounds recited in the claims on appeal.
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