Appeal No. 1996-1080
Application No. 07/869,111
claimed R1 substituents (i.e., the 9-oxime substituents, see
the sentence bridging pages 2-3 of the Answer). The examiner
applies Watanabe to show that the claimed substituents for the
9-oxime derivative are known in the art, again citing Kirk-
Othmer for the teaching that silylation is conventional for
protecting hydroxy substituents (Answer, page 3).
Appellants argue that only by extensive picking and
choosing of substituents from the generic formula of Faubl
could one of ordinary skill in the art arrive at compounds
analogous to the claimed compounds (Brief, paragraph bridging
pages 6-7). Furthermore, appellants do not contest the
equivalency of oxime substituents taught by Watanabe but argue
that this reference cannot be combined with Faubl since its
teaching is in “an entirely different context,” i.e., directed
to a process for 6-methylation (Brief, page 7).
Faubl discloses a generic formula (II) where there are
several selections of variables (column 2, lines 15-39).
However, the choices for each variable are relatively few,
with “preferred” compounds directing one of ordinary skill in
the art to various “trimethylsilyl”, 4'’-hydroxy (i.e., B is
OH), and R6= methyl derivatives (column 2, lines 39-48). The
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