Appeal No. 2001-0971 Page 2
Application No. 08/256,736
Claims 1-18 stand rejected under 35 U.S.C. § 103(a) as being obvious
over the combination of Denis and Swindell. After careful review of the record
and consideration of the issue before us, we reverse.
DISCUSSION
Claims 1-18 stand rejected under 35 U.S.C. § 103(a) as being obvious
over the combination of Denis and Swindell. The rejection is set forth below.
Denis [ ] teaches an esterification process which is
substantially identical to the claimed process; note columns 2 and 3
of the patent. Denis [ ] teaches the temperature range of 60° to
90°C while the instant temperature range is -10° to less than 60°.
Swindell [ ] teaches a similar esterification process wherein the
reaction temperature is not a factor to be concerned [sic]; note the
Scheme I in page 1177 of the reference. Thus, it would have been
prima facie obvious to one of ordinary skill in the art at the time the
claimed invention was made to carry out a process of Denis [ ] in a
temperature range different from the prior art range; i.e., 60°C to
90°C, in the absence of the unobvious and/or unexpected results.
Examiner’s Answer, page 4.
Appellants argue that the examiner has failed to set forth a prima facie
case that the claimed esterification process, when performed at a temperature
ranging from -10°C to less than 60°C, is obvious over the combination of Denis
and Swindell. We agree.
According to Appellants, Denis teaches a range of 60°C to 90°C for the
esterification. In addition, Appellants assert that, contrary to the examiner’s
characterization of Swindell, in fact, Swindell teaches that the esterification was
performed at 70°C. Appellants argue that “none of the art of record even
remotely suggests using a temperature less than 60°C,” Appeal Brief, page 9,
and that, “the esterification of the baccatine derivative was known to be a difficult
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