Appeal No. 2003-1245 Page 3
Application No. 09/467,292
the amide substituent on the azepinone moiety precludes benzyl (Paper No. 19, page
9, last paragraph). By the same token, the title compound of Example 64 disclosed by
Karanewsky has a benzyl group at the "-position of the amide substituent on the
azepinone ring. Again, the examiner has not established that Karanewsky discloses
ring position isomers of applicants’ claimed compounds. The examiner has not
established that any compound disclosed by Karanewsky, including the compound of
Example 64, is in all respects identical to a compound within the scope of appealed
claim 1 except for the position of variable R2 (applicants’ nomenclature) on the
azepinone ring.
Where, as here, the premise of the examiner’s rejection is incorrect, the
rejection cannot stand. Accordingly, the rejection of claims 1 through 13 under
35 U.S.C. § 103(a) as unpatentable over Robl or Karanewsky is reversed.
Other Issue
In Paper No. 8, received February 12, 2001, applicants submitted an
amendment to independent claim 1 canceling the recitation of variable R3 as “C1-C6
alkyl.” It is apparent therefore that claim 8, which depends from claim 1 and recites
“R3 is C1-C6 alkyl,” constitutes an improper dependent claim and should be canceled.
On return of this application to the Examining Corps, we recommend that applicants
and the examiner cooperate in resolving this informal matter.
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