Appeal No. 2002-1438 Page 7
Application No. 09/345,966
in toluene (see the Doll reference, page 33, line 14) "under the conditions described by
Kessels" (Paper No. 10, page 6, paragraph 1). In referring to "the conditions described
by Kessels," the examiner apparently means heating at 140°C (disclosed by Kessels at
column 5, line 48) but not using tertiary butanol (disclosed by Kessels at column 5, line
46). According to the examiner, therefore, a person having ordinary skill would have
arrived at applicants' claimed process including the conditions of racemization spelled
out in the claims. We disagree.
In our judgment, the examiner relies on the impermissible use of hindsight in
selecting toluene (Doll, page 33, line 14) and 140°C (Kessels, column 5, line 48) but
excluding or ignoring the racemization solvent employed by Kessels. That solvent is an
alcohol, e.g., tertiary butanol (Kessels, column 5, line 46).
The examiner's decision is reversed.
REVERSED
)
Sherman D. Winters )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Eric Grimes )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
Lora M. Green )
Administrative Patent Judge )
Schering-Plough Corporation
Patent Department (K-6-1, 1990)
2000 Galloping Hill Road
Kenilworth, NJ 07033-0530
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