Appeal No. 2001-0694 Page 4
Application No. 08/908,807
With respect to the double patenting rejection, the patents relied upon all
claim the 4R,5S oxazolidine isomer. According to the examiner,
[t]he disclosure of one isomer would suggest the
other(s). Therefore, the instant claimed oxazolidine
compounds would have been suggested to one skilled
in the art.
Examiner’s Answer, page 4.
Basically the same reasoning is used in the obviousness rejection under 35
U.S.C. ' 103(a). Due to its brevity, the entire rejection is reproduced below.
Appellants claim oxazolidine compounds. [Bourzat II] (page 2),
[Commercon III] (page 5186) and Kelly (column 11) each teach
oxazolidine compounds. The difference between the compounds of
the prior art and the compounds instantly claimed is that the prior art
teaches a different isomer than that which is instantly claimed.
One stereoisomer would suggest the other(s). One skilled in
the art would have been motivated to prepare compounds embraced
by the reference genera with the expectation of producing oxazolidine
compounds which would be useful in preparing taxane derivatives.
Therefore, the instant claimed compounds would have been
suggested to one skilled in the art.
Answer at page 5.
Appellants contend, in response to the above rejection, that the Examiner
has failed to make out a prima facie case of obviousness. Specifically, Appellants
argue that the rejection has provided no reasoning of how any of the references
relied upon, either for the double patenting rejection or the obviousness rejection,
“teach or suggest the desirability of the selective alteration of only one chiral center
(to the exclusion of the other chiral centers),” to arrive at the claimed compounds.
We agree.
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