Appeal No. 2001-1045 Page 4
Application No. 09/178,594
examiner . . ., in order to meet the burden of proof, must provide reasons why
one of ordinary skill in the art would not consider the description sufficient.” Id.
In this case, the examiner appears not to have fully appreciated the
specification’s disclosure. The specification makes clear that two methods of
making 4-substituted azetidinone derivatives are being disclosed, one comprising
catalysis with a copper compound alone and one comprising catalysis with zinc
plus a copper compound. See, e.g., page 4, line 8 to page 5, line 15:
The present inventors found that an ester compound represented
by the general formula (2) . . . can be treated with a metal base to
give the corresponding metal enolate, which can then be reacted
with an azetidinone derivative represented by the general formula
(1) . . . in the presence of a copper compound to produce a 4-
substituted azetidinone derivative represented by the general
formula [3]. . . .
At the same time, it was found that an ester compound represented
by the general formula (2) . . . can be reacted with an azetidinone
derivative represented by the general formula (1) . . . in the
presence of zinc and copper compounds to produce a 4-substituted
azetidinone derivative represented by the general formula [3].
(Bracketed material in original.) On page 8, the specification lists a number of
copper compounds suitable for use as catalysts. This list follows immediately
after another discussion of the alternative reaction, “when the ester compound
. . . is reacted with the azetidinone derivative . . . directly without converting to the
corresponding metal enolate . . . in the presence of zinc and copper compounds.”
See page 7, lines 34-39. Thus, it is clear from the discussion in the specification
that the alternative, direct conversion process is intended to be practiced using
as a catalyst the combination of zinc and one or more of the listed copper
compounds, just as recited in the claims.
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