Appeal No. 2003-0855 Page 6
Application No. 09/147,675
A1 which, on its face, seeks the benefit of the filing date of U.S. Application No.
578,942, filed September 7, 1990.4
On return of this application to the examining corps, we recommend that the
examiner review U.S. Patent No. 5,482,934 in its entirety. Unlike Jakupovic, the '934
patent discloses compounds which fully meet compounds having formula (I) recited in
claim 17 on appeal. In particular, we invite attention to column 10, example VII of the
'934 patent disclosing preparation of the same R/S-epimer mixture recited in claim 8 on
appeal. Further, example VII of U.S. Patent No. 5,482,934 discloses that:
The mixture of epimers is resolved by preparative HPLC [high-pressure
liquid chromatography], using a 7 µm Lichrosorb RP-18 column (250x10
mm i.d.) and ethanol/water as the mobile phase, and obtaining the (22R)-
epimer practically pure and the (22S)- epimer in a purity greater than
99%.
The product containing the (22R,S)- mixture can also be purified
without having to use column chromatography by a method which is
described in the following example. [See the '934 patent, column 10, lines
37-44 (emphasis added).]
We recommend that the examiner evaluate the patentability of applicant's process
claims in light of U.S. Patent No. 5,482,934, particularly examples VII and VIII.5
Conclusion
4 Copies of Offenlegungsschrift DE 41 29 535 A1 and U.S. Patent No.
5,482,934 are enclosed with this opinion.
5 The record reflects that the examiner previously entered a rejection under
35 U.S.C. § 103(a) based on a combination of references, including DE 41 29 535 A1.
See Paper No. 8, page 8; and Paper No. 12, page 7. That rejection has now been
withdrawn (Paper No. 16, page 3). But the record does not reflect that the examiner
considered an English translation of DE 41 29 535 A1 or that the examiner evaluated
the patentability of applicant's process claims in light of U.S. Patent No. 5,482,934.
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