Appeal No. 1999-1685
Application 08/564,345
oxazolidinecarboxylic acid ester having formula II set forth in claim 1 on appeal. A
correct copy of claim 1, which is illustrative of the subject matter on appeal, may be
found in Appendix II attached to the Appeal Brief.
THE REFERENCES
The prior art references relied on by the examiner are:
Bourzat et al. (Bourzat) 5,476,954 Dec. 19, 1995
Bouchard et al. (Bouchard) 5,556,877 Sep. 17, 1996
Martin et al. (Martin) 4,240,987 Dec. 23, 1980
THE REJECTIONS
Claims 1 through 5 and 11 through 13 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over the combined disclosures of Bourzat, Bouchard, and Martin
(Examiner's Answer, pages 4-7).
Claims 1 through 9 and 11 through 13 stand rejected under 35 U.S.C. § 112, first
paragraph, as based on a non-enabli ng disclosure. In setting forth this rejection, the
examiner points out that variables R3 and R4 in claim 1 may be, inter alia, "an aralkyl
radical in which the alkyl portion has 1 to 4 carbon atoms and the aryl portion is
substituted with one or more alkoxy radicals having 1-4 carbon atoms, or an aryl radical
substituted with one or more alkoxy radicals having 1-4 carbon atoms." The examiner
also points to the recitation of variable R3 as "a phenyl radical substituted with a
trihalomethyl radical." According to the examiner, applicants' specification does not
adequately teach how to carry out selective iodination on an oxazolidinecarboxylic acid
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