Appeal No. 95-4706
Application 08/070,869
oxazolidion-2-one products are encompassed by the claims of the parent >056 patent and the herein
claimed processes are a step in the processes of forming fluoropropane derivatives claimed in the
grandparent >009 patent (see supra note 1). According to the examiner, Saari3 discloses a cyclization
process to prepare a 5-(3-hydroxy-phenyl)-oxazolidion-2-one in which the intermediate 1-(3-
hydroxy-phenyl)-2-alkoxycarbonylamino-propane is formed in situ. Thus, the examiner contends that
the claimed invention would have been obvious under 35 U.S.C. '103 because A[o]ne of ordinary skill
would reasonably have expected analogous reactants, differing only in substitution remote from the
reaction sites, also to cyclize under the same conditions to produce the expected 2-oxalidinones [sic]
with a reasonable expectation of success,@ relying on the authority of In re Durden, 763 F.2d 1406,
226 USPQ 359 (Fed. Cir. 1985) (answer, page 6).
In the absence of an analysis establishing the prima facie obviousness of the claimed invention
as a whole, thus including consideration of the non-obvious oxazolidion-2-one products obtained by
the claimed processes, the examiner=s rejection cannot be sustained. In re Brouwer, 77 F.3d 422,
426, 37 USPQ2d 1663, 1666 (Fed. Cir. 1996); In re Ochiai, 71 F.3d 1565, 1569-71, 37 USPQ2d
1127, 1131-32 (Fed. Cir. 1995).
The examiner=s decision is reversed.
Reversed
3 Saari is listed at page 3 of the answer.
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