Appeal No. 2003-2146 Page 11
Application No. 09/546,143
claimed invention. Accordingly, we reverse the rejection of claims 12, 14, 15, 17,
19, 21, 23 and 25 under 35 U.S.C. § 112, first paragraph.
THE REJECTIONS UNDER 35 U.S.C. § 102:
Krogsgaard-Larsen:
According to the examiner (Answer, page 9), “[c]ompounds 12 and 13 on
page 328 [of Krogsgaard-Larsen] are embraced by formula VIII in claim 17 with
R3 as lower alkyl, and R4[ ]as an amino protecting group.” We will separately
discuss the merits of the rejection as it relates to compounds 12 and 13.
Compound 13
As appellants point out (Brief, page 8), “[c]ompound 13 of Krogsgaard-
Larsen et al. has a trans configuration between the hydroxyl and ester groups …
[and therefore] does not encompass the compounds of claim 17, which have a
cis configuration between the hydroxyl and ester groups….” We agree.
We are not persuaded by the examiner’s argument (Answer, page 10,
emphasis removed), “spatial orientation of a compound can flip flop from one
form to the other because bonds are not static.” According to the examiner (id.),
if a trans-form of a compound [exists], a cis-form also exists inevitably. This is
the most fundamental principle in stereo-chemistry. So, if a reference discloses
a trans-form, then a cis-form will be inherently embraced.” The examiner’s logic
eludes us. The examiner fails to explain how one of ordinary skill in the art can
isolate a particular enantiomeric form of a compound, as set forth in appellants’
claimed invention, whose spatial orientation “flip flops” from one spatial
orientation to another. Further, it appears that the examiner is confused with
regard to “the most fundamental principles” of stereo-chemistry. The trans
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