Appeal No. 2001-0694 Page 6
Application No. 08/908,807
side chain. Admittedly, while the Kelly reference teaches the use of an oxazolidine
in which the stereochemistry is not defined, see Kelley, Col. 11, Formula 7, and
teaches that “[b]oth oxazolidine isomers are equally effective” in the production of
taxol analogs, see id. at col. 12, lines 62-64, in the reaction charts, when the
stereochemistry of the oxazolidine is defined, the 4R,5S isomer is used, see id. at
col. 80, compound B-3. The rejection sets forth no facts or findings that the ordinary
artisan would have known how to use the 4R,5S oxazolidine to produce taxane
derivatives. Finally, although not contested by Appellants, the rejection does not set
forth any facts or findings that the prior art enables the ordinary artisan to synthesize
the claimed compounds.
Thus, the rejection of claim 1-21 under 35 U.S.C. ' 103(a) over Bourzat II,
Commercon III and Kelly, as well as the double-patenting rejections over claims 1-3
of Mas, claim 29 of Commercon I, claims 1 and 2 of Commercon II and claim 13 of
Bourzat I, is hereby reversed.
OTHER MATTERS
There is some ambiguity in the record as to what diastereomers are
encompassed by the teachings of Kelly.
As stated above, the Kelly reference teaches oxazolidine compounds of
unspecified stereochemistry. See Kelly, Col. 11, Formula 7. Kelly states that the
“oxazolidines . . . are produced as a mixture of diastereomers but these have been
separated in some cases and the diastereomers have been shown to be equally
useful when carried on in the synthesis,” id. at col. 12, lines 55-59, and also states
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