Appeal No. 95-4441
Application No. 07/970,229
will sustain the examiner’s § 103 rejection of claims 13
through 15, 18 through 23, 26 and 27 as being unpatentable
over Sydiskis and Fleming in view of Brockmann, Lavie and
Suzuki as well as his
§ 103 rejection of claims 21 through 23, 26 and 27 as being
unpatentable over Brockmann in view of Lavie and the Merck
Index.
We cannot sustain, however, the examiner’s prior art
rejections of claims 17 and 25 for the reasons argued by the
appellants in their Brief and Reply Brief. Stated succinctly,
the examiner’s obviousness conclusion is inappropriately based
upon his proposition that “claims 17 and 25 simply recite
positional isomers of the compounds set forth in claims 14 and
22” (Answer, page 8). In other words, the examiner’s
conclusion is based upon the clearly inappropriate treatment
of claims 14 and 22 as though they were prior art.
The decision of the examiner is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
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