Appeal No. 1999-1685
Application 08/564,345
ester having formula (II) in claim 1, in order to prepare an oxazolidinecarobxylic acid, or
derivative, having formula (I) without also iodinating the aryl moieties of the above-
specified R3 and R4 groups. As stated by the examiner, "[r]easonable assurance that
R3, R4 phenyls aren't also instantly iodinated is lacking" (Examiner's Answer, page 7).
The examiner further argues that applicants' specification does not adequately teach
how to carry out the claimed process using the reagents specified in claims 6 through 9
(Examiner's Answer, page 8).
The examiner further rejects claims 1 through 9 and 11 through 13 under 35
U.S.C. § 112, first and second paragraphs, in view of the recitation of variable R1 as "a
saturated or unsaturated nitrogen-containing 5 -or 6-membered heterocyclic radical"
(Examiner's Answer, pages 9 and 10). According to the examiner, that recitation
literally embraces alumaborazine, a product which "has never been made" and which
constitutes an "impossible" heterocyclic (Examiner's Answer, page 9). The examiner
argues that applicants' specification is defective in not adequately teaching requisite
starting materials, which would be useful for preparing alumaborazine.
DISPOSITION
On consideration of the record, we find that the examiner's rejections have little
merit. For the reasons succinctly stated in applicants' Appeal Brief and Reply Brief, we
shall not sustain any of the prior art or non-prior art rejections. We add the following
comments for emphasis, respecting the examiner's argument that alumaborazine is
literally embraced by the recitation of variable R1 in claim 1, and that applicants'
specification does not adequately teach "how to make" alumaborazine.
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