Appeal No. 2003-0855 Page 5
Application No. 09/147,675
The examiner has not established that Jakupovic discloses or suggests a process for
preparing any compound where "3-8C-cycloalkyl," or cyclohexyl, is attached at position
22 of the fused ring system. Again, we refer to the definition of variable R1 in claim 17;
and, again, we note that claim 8 is restricted to a process for preparing a specific
compound having a cyclohexyl group at position 22 of the fused ring system.
Accordingly, the examiner failed to establish a prima facie case of obviousness of
claims 3 through 19 based on the disclosure of Jakupovic alone.
In conclusion, we reverse the examiner's rejection of claims 3 through 19 under
35 U.S.C. § 103(a) as unpatentable over Jakupovic. Where, as here, the examiner
failed to establish a prima facie case of obviousness, we find it unnecessary to discuss
applicant's declaration evidence submitted to rebut any such prima facie case.
Other Issue
One further matter warrants attention. In the instant specification, page 1,
applicant refers to Offenlegungsschrift DE 41 29 535 A1 as relevant prior art.
Subsequently, in the "Supplement to Information Disclosure Statement" (Paper No. 25),
applicant cites U.S. Patent No. 5,482,934 ('934), issued January 9, 1996 to Calatayud
et al. The '934 patent is based on Application No. 278,112, filed July 20, 1994, said to
be a continuation of Application No. 578,942, filed September 7, 1990, now abandoned.
This means to say that U.S. Patent No. 5,482,934 is the "equivalent" of DE 41 29 535
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