Appeal No. 2000-1024 Page 6
Application No. 08/379,551
Holy (EP) was cited for teaching compounds similar to the claimed
compounds substituted with different groups, which also have anti-viral activity.
Starrett was similarly cited for teaching “that for analogous phosphonate
derivatives as claimed herein, substitution with alkyl- on the purine ring system at
various ring positions is not a new modification.” Id. at 6.
The examiner concludes:
Thus it would have been obvious to one skilled in the art at
the time the instant invention was made to expect instant optical
isomers in main claim 1 and claims dependent thereon as well as
various 2- and/or 6-substituted purines in independent claims
45-48, 55, 63 to be useful against one or more viruses in view of
the close structural similarity and equivalency teachings outlined
above.
Id.
The panel would like to initially note that review of the issues on appeal
was severely hampered by the lack of claim by claim analysis, i.e., the use of a
shot-gun rejection. In rejecting claims 1, 4, 6, 8, 45-48, 55, 63, 65, 70, 72, 73,
75, 85, 91, 93 and 94 over the combination of Holy (US), Webb (EP or US), Yu,
Starrett and Karrer, the examiner apparently cites Holy (EP) and Starrett for their
teaching of certain derivatives that are only required in the dependent claims.
Moreover, the rejection implies that at a minimum, claim 1 is would have been
obvious over Holy alone.
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