Appeal No. 2001-0665
Application 08/439,920
(2) Greene discloses 1-methyl-1-methoxyethyl, inter alia, as a hydroxyl protecting group,
but the combined disclosures of Greene and Holton do not provide adequate reason,
suggestion, or motivation to select 1-methyl-1-methoxyethyl among many other hydroxy
protecting groups to arrive at the claimed intermediate. Appellants conclude that the
examiner’s rejection under 35 U.S.C. § 103 is predicated on the impermissible use of
hindsight, and that the examiner has not established a prima facie case of obviousness of
the appealed claims.
On reflection, having considered these countervailing arguments, we shall not pass
on the question of prima facie obviousness. For the purposes of this appeal, we shall
assume arguendo, without deciding, that claims 20, 22, 28, and 30 would have been prima
facie obvious over the cited prior art. We agree with appellants that uncontroverted
evidence of record is sufficient to rebut any such prima facie case.
In the Appeal Brief, pages 5 through 8, appellants explain the significance and
advantages of their claimed intermediate containing a 1-methyl-1-methoxyethoxy group at
the 20 position on the C-13 sidechain. According to appellants, their intermediate can be
prepared from a solid $-lactam having a crystalline form. In contrast, the closest prior art
compound of Holton has a 1-ethoxyethoxy group at the 20 position on the C-13 sidechain
and that compound is prepared from a liquid $-lactam. The foregoing facts are
established in the record, and not controverted by the examiner. Nor does the examiner
controvert appellants’ argument that their claimed intermediate possesses unexpected
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