Appeal No. 2003-2146 Page 14
Application No. 09/546,143
For the foregoing reasons, we reverse the rejection of claim 17 under 35
U.S.C. § 102(b) as anticipated by Krogsgaard-Larsen.
Adams:
According to the examiner (Answer, page 9), “Formula X in [appellants’]
claim 23 inherently embraces compound 20 on page 2356 [of Adams]. Formula
XI in [appellants’] claim 25 inherently embraces compound 21 on page 2357 [of
Adams].” However, as appellants point out (Brief, pages 7-8), the compound
taught by Adams is in the trans-configuration, not the cis-configuration as
required by appellants’ claimed invention. To emphasize this “fundamental
principle” of stereo-chemistry, we note that Adams resolve the enantiomers of
compound 21. Scheme 3 on page 2357 of Adams, illustrates the two
enantiomeric forms (compound 21a and 21b) of the trans configuration of
compound 21. See Adams, bridging sentence, page 2356, column 2 – page
2357, column 1; and Scheme 3, page 2357.
For the foregoing reasons, we reverse the rejection of claims 23 and 25
under 35 U.S.C. § 102(b) as anticipated by Adams.
Barbier:
According to the examiner (Answer, page 9), “Formula XI in [appellants’]
claim 25 inherently embraces compounds B1-B23 listed on columns 18-21 [of
Barbier]. However, as appellants point out (Brief, page 8), “[t]he exemplified
compounds of Barbier et al. are all in the trans [con]formation.”4 Therefore,
appellants assert (id.), “the teaching of the trans [con]formation does not
anticipate the instantly claimed, structurally distinct, cis [con]formation.”
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