Appeal No. 2004-0245
Application 09/265,926
while in the claimed process, the step is conducted after acetylation, and thus one of ordinary
skill in this art would not have been led to the sequence of steps in the claimed process (id.).
The examiner submits that while Grinter teaches a preferred embodiment wherein
dechlorination is carried out in scheme “(i),” all of the teachings of the reference must be
considered, citing, inter alia, In re Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA
1976) (answer, page 7), and stating that the “decarboxylation in the examples would not act to
preclude any other understanding of the process” (answer, page 7). The examiner further
submits that the term “comprising” renders the claims “embracive of additional isolation and
purification steps,” and in this respect, points out that “the actual examples of this specification
do indeed involve isolation and purification; see e.g. last sentence of example 1, and last three
sentences of example 2” (id., page 8).
We agree with the position of the examiner with respect to the issues raised by
appellant’s arguments, and turn now to consideration of the objective evidence in the Green and
Jones declarations in light of the arguments raised by appellant and the examiner with respect
thereto.
According to appellant, the examiner was not persuaded by the evidence in the Green
declaration, citing “[e]ssentially three reasons” given by the examiner in holding the evidence
unpersuasive in the Office action of June 14, 1999 (Paper No. 4), and that the evidence in the
Jones declaration “directly addresses the objections raised by the Examiner” (brief, pages 8-9).
Appellant does not otherwise address the examiner’s objections to the evidence in the Jones
declaration (id.), and the examiner does not address the matter. Thus, we do not further consider
the evidence in the Green declaration7 except to the extent indicated below.
According to appellant, the evidence in the Jones declaration compares a process falling
within appealed claim 10, wherein “the chlorine is removed at the end” of the process, with a
process representing Grinter, wherein “the chlorine is removed earlier,” with the claimed process
resulting in 41% yield of famciclovir while that representing Grinter resulted in “an overall yield
of 14% of a crude brown oil representing a 0% yield of usable famciclovir,” thus establishing
7 Cf. In re Baxter Travenol Labs., 952 F.2d 388, 392, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991)
(“It is not the function of this court to examine the claims in greater detail than argued by
appellant, looking for nonobvious distinctions over the prior art.”).
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