Ex parte SINGH et al. - Page 39




          Appeal No. 95-0865                                                           
          Application 08/08/007,950                                                    

                         p.   Claim 19                                                 
               Claim 19 is rejected as being unpatentable over Bisacchi,               
          Slusarchyk, Searcey, Hagberg I, Ichikawa and Zahler.  Claim 19               
          requires the same two additional steps as Claim 13, but in                   
          reverse order.  The order in which deprotection and conversion of            
          the chloro group to the oxo group at the 6-position take place               
          would not seem to be significant.  In this respect, we call                  
          attention to Bisacchi (col. 8, lines 20-26) which teaches that               
          (1) deprotection then chloro to oxo conversion or (2) chloro to              
          oxo conversion followed by deprotection are optional orders for              
          accomplishing both deprotection and chloro to oxo conversion.                
          The use of "hydrogenolysis" to deprotect R  groups is described4                                 
          by Bisacchi (col. 8, lines 36-44), particularly when the P                   
          protecting group is benzyl as required by Claim 19.                          

                         q.   Claims 20-21                                             
               Claims 20-21 are rejected as being unpatentable over                    
          Bisacchi, Slusarchyk, Searcey, Hagberg I, Ichikawa and Zahler.               
          Claim 20 is similar to Claim 13, but calls for a step (b) in                 
          which the "Prot" protecting groups are removed and the Y  group              
                                                                   1                   
          (e.g., a chloro) at the 6-position is converted to a 6-methoxy               
          ()O)CH ) group.  As is apparent from Claim 21, step (b) may be               
                3                                                                      
          accomplished by treatment with sodium methoxide in methanol.                 

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