Appeal No. 1999-1437
Application No. 08/732,065
Claim 38 is directed to the isolated enantiomeric S-isomer of the formula (S)-2-(2-
methylpropyl)-1,4-butanedioic acid, 4-(1,1-dimethylethyl)ester. It would appear that the
applicants added the terminology “isolated” in order to distinguish the presently claimed
compound from a mixture which would possibly include other isomeric forms. (Applicants'
Response of December 29, 1997, page 3). Thus, we understand it to be appellants' intent
to limit the claimed subject matter to the isolated isomeric form of the butanedioic acid
ester of claim 38. This compound is disclosed as being an intermediate useful in the
preparation of certain amine derivatives which are disclosed as being useful in the
treatment of certain seizure disorders. (Specification, Chart II, compound 105 at page 47
and pages 4-5).
The rejection under 35 U.S.C. § 103
The examiner's rejection of claim 38 depends, solely, on the teachings of Handa.
The examiner relies on Handa as disclosing (Answer, page 3):
the compound 4-tert butyl hydrogen 2(RS)-isbutylsuccinate [sic] (note line 4
of column 12) which is the racemic mixture containing the instantly claimed
compound. The reference also generically teaches the claimed compounds,
[sic] note the compounds of formula III of column 6 and note lines 36-49 of
column 3.
The examiner acknowledges that "[t]he reference does not specifically exemplify the
instant compound." (Id.) However, the examiner urges that (Answer, sentence bridging
pages 3-4):
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