Appeal No. 2001-1805 Page 4
Application No. 09/141,402
Contrary to the examiner’s position (Answer page 5)1, we find the N-(3,4-
Dimethyl-5-isoxazolyl)-4’-(2-oxazolyl)[1,1’-biphenyl]-2-sulfonamide compound set
forth in Example 1(D) of Murugesan to be the most relevant compound to
appellants’ claimed invention. However, as appellants point out (Brief, page 4)
Murugesan “discloses an amorphous form of this compound, having a melting
point of 90 to 98º C…..” Stated differently, notwithstanding that the claimed
compound has the same formula as Murugesan, the examiner has not
established that Murugesan suggests appellants’ specifically claimed polymorph.
This is clearly demonstrated by the different melting points for the two
compounds.
We note the examiner’s analysis of the N-(3,4-Dimethyl-5-isoxazolyl)-4’-
(5-oxazolyl)[1,1’-biphenyl]-2-Sulfonamide compound set forth in Murugensan’s
example 4, wherein she states (Answer, page 6) that a “difference in bonding
location would result, as expected in any isomeric situation, in certain differences
in physical properties. Here, one such difference is reflected in melting points
that range from 189-191º C[] for the Murugesan compound compared to 143-
145º C[] for the instantly claimed compound.” However, the problem with this
argument should be self evident (Answer, page 6), the “compound taught by
Murugesan differs from the instantly claimed compound … at the 5-oxazolyl
position….” As appellants argue (Reply Brief, page 2), “[w]hile Example 4 of …
[Murugesan] indeed discloses a crystalline form of a compound having a melting
point of 189-191º C, it fails to disclose or suggest the invention of claim 41 …
1 At page 5 of the Answer, the examiner finds that “[e]xample 4 of Murugesan is believed to be the
most relevant and most critical to the issue of obviousness for the instant application.”
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