Appeal No. 95-0865
Application 08/08/007,950
The decision of the examiner rejecting claims 6-19 and 22
based on Bisacchi, Slusarchyk and Searcey is reversed.
2. The examiner's rejection based on Hagberg I
The examiner rejected claims 6-13 and 25 as being
unpatentable under 35 U.S.C. § 103 over Hagberg I.
With reference to Method of Preparation L and Example 10,
Hagberg I differs from the subject matter of claim 6 in that
Hagberg I does not describe the reaction of a cyclobutane with a
purine.
Thus, it can be said that Hagberg I does not describe at
least one of applicants' starting materials, i.e., the
cyclobutane. According to the examiner, the failure of Hagberg I
to describe the cyclobutane starting materials is of no moment.
In support of his position, the examiner cites and relies on In
re Durden, 763 F.2d 1406, 226 USPQ 359 (Fed. Cir. 1985). More to
the point, in our opinion, is In re Ochiai, 71 F.3d 1565, 37
USPQ2d 1127 (Fed. Cir. 1995). The mere fact that a compound with
a mesyl group has been reacted with a purine does not per se
establish that it would have been obvious to react a cyclobutane
with a mesyl group with a purine. Based on Hagberg I alone, we
discern no reason, motivation or suggestion to use a cyclobutane
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