Appeals 2006-1443 and 2006-1465
Reexamination Control Nos. 90/004,950 and 90/005,200
1 acetyloxy. Ochiai ‘606, col. 8, lines 34-35. The process of claim 1 on appeal can be used
2 to make Compound IX when R4 of claim 1 on appeal is a residue of a nucleophilic
3 compound. For example, R4 can be —W—R where W is oxygen and R is acyl. One
4 example of an —W—R group is acyloxy, e.g., acetyloxy. Ochiai 216, col. 6, lines 30
5 and 39. The method of claim 1 of Ochiai ‘216 can be used to make some of the
6 compounds falling within the scope of Ochiai ‘606 compound IX.
7 The third method involves use of Ochiai ‘606 compound VII (col. 1, line 60).
8 Some of the compounds falling within the scope of Ochiai ‘606 compound VII are made
9 by reacting a compound having an acyl group with a “Molecule” in accordance with
10 claim 1 of Ochiai ‘216.
11 What surfaces from the discussion above is that regardless of whether one skilled
12 in the art practices the first, second or third method described in Ochiai ‘606, that person
13 uses the process of claim 1 of Ochiai ‘216 to make at least some of the Ochiai ‘606
14 compounds. The Ochiai ‘216 method is used to make compounds via the first method.
15 The process is also used to make starting materials for practicing the second or third
16 method. We have a case where all the described methods for making some of the ‘606
17 cephems in one fashion or another involve the use of the process of claim 1 of
18 Ochiai ‘216. Having rejected Dr. Wuest’s speculative method, no credible method for
19 making the cephems of Ochiai ‘606, other than those described in Ochiai ‘606, has been
20 placed before us. This is not a case where a credible alternative method for making the
21 Ochiai ‘606 compounds has been established. Appellants have not established that there
22 are credible separate “independent and distinct” methods for making some of the
23 cephems claimed in Ochiai ‘606.
22
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