Appeal No. 1997-2195
Application 08/102,752
of obviousness of appellant’s claimed invention over Meyer.
Rejection of claims 2-5 over Hamprecht ‘927
Hamprecht ‘927 discloses reacting a pyrimidine having
fluorine at the 2-position with an amine to substitute an amino
group for the fluoro substituent (col. 4, lines 20-53). At the
6-position, the Hamprecht ‘927 pyrimidine has an -OR group,2
where R is alkyl, alkenyl, alkynyl, cycloalkyl, phenyl or benzyl2
(col. 1, lines 5-21).
The examiner argues, in reliance upon a number of cases
including In re Durden, 763 F.2d 1406, 226 USPQ 359 (Fed. Cir.
1985), that “the mere use of different starting materials,
whether novel or known, in a conventional process to produce the
product one would expect therefrom does not render the process
unobvious” (answer, page 8).
The examiner reached his conclusion of obviousness of
appellant’s claimed invention based on a per se rule that use of
a new starting material in a prior art process would have been
obvious to one of ordinary skill in the art. As stated by the
Federal Circuit in In re Ochiai, 71 F.3d 1565, 1572, 37 USPQ2d
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