Appeal No. 1999-0462
Application 08/440,291
It would appear that the Holton reference, alone, does not constitute sufficient
evidence to support a conclusion of obviousness of the claimed invention. Holton does not
disclose or suggest a $-lactam starting material having a 1-methyl-1-methoxyethoxy group
at the 3 position. Nor does Holton disclose or suggest a sidechain-bearing taxane of
formula (VII) having a 1-methyl-1-methoxyethoxy group at the 20 position on the C-13
sidechain. In this regard, the examiner would apparently bring in Greene through the “back
door.”1 The examiner does not set forth Greene in the statement of rejection under 35
U.S.C. § 103 but, nevertheless, refers to this reference in the Examiner’s Answer, pages 2
and 3. According to the examiner, Greene establishes that appellants’ 1-methyl-1-
methoxyethyl group is “a well known and conventional hydroxy protecting group.”
(Examiner’s Answer, page 3, last paragraph).
On the particular facts of this case, we find it unnecessary to decide whether the
examiner erred in not setting forth Greene in the statement of rejection under 35 U.S.C. §
103. See, In re Hoch, 428 F.2d 1341, 1342 n. 3, 166 USPQ 406, 407 n. 3 (CCPA 1970)
(Where a reference is relied on to support a rejection, whether or not in a "minor capacity,"
there would appear to be no excuse for not positively including the reference in the
statement of the rejection.) Nor shall we pass on the question of prima facie obviousness.
For the purposes of this appeal, we shall assume arguendo, without deciding, that the
1 Greene et al. (Greene), “Protective Groups in Organic Synthesis,” 2d ed., pp.
10-12 (John Wiley & Sons, Inc., 1991)
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