Appeal No. 1996-2419
Application No. 08/282,129
meaning of 35 U.S.C. § 102(b). We answer that question in the
negative.
For a prior art reference to anticipate in terms of
35 U.S.C. § 102, every element of the claimed invention must
be identically shown in a single reference. Diversitech Corp.
v. Century Steps Inc., 850 F.2d 675, 677, 7 USPQ2d 1315, 1317
(Fed. Cir. 1988); Hybritech Inc. v. Monoclonal Antibodies,
Inc., 802 F.2d 1367, 1379, 231 USPQ 81, 90 (Fed. Cir. 1986),
cert. denied, 480 U.S. 947 (1987). That is not the case here.
The examiner relies on Holton's description of intermediate
compounds 6 in column 12, lines 20 through 38. Those
compounds, however, are said to carry "a hydroxy protecting
group" at the 7-position of the taxane molecule (see Holton's
definition of T in column 12,
1
line 36). The generic expression "hydroxy protecting group"
does not identically describe applicants' CH R groups attached2 1
at the 7-position of formula (I) in claim 1. Holton also
describes triethylsilyl as exemplary of a hydroxy protecting
group at the 7-position (column 11, lines 60 through 68).
Again, "a triethylsilyl group" does not identically describe
-6-
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007