Appeal No. 2004-0245
Application 09/265,926
We determine that these teachings of the reference provide substantial evidence well
supporting the examiner’s position that, prima facie, Grinter would have taught the claimed
process encompassed by appealed claim 10 to one of ordinary skill in this art (answer, pages
6-7). Indeed, while Grinter does teach and exemplify dechlorination of a 6-chloro-purine
derivative intermediate of formula (VI) to a 6-hydrogen-purine derivative intermediate of
formula (VI) during scheme “(i),” the reference nonetheless clearly would have taught that
dechlorination can also be accomplished in scheme “(ii)” in order to convert a 6-chloro-purine
derivative intermediate of formula (I) to a 6-hydrogen-purine derivative final product “X.”
Accordingly, one of ordinary skill in this art routinely following the teachings of Grinter
would have arrived at the claimed process encompass by appealed claim 10 without resort to
appellant’s specification and claims.
Therefore, since a prima facie case of obviousness has been established by the examiner
over Grinter, we have again evaluated all of the evidence of obviousness and nonobviousness
based on the record as a whole, giving due consideration to the weight of appellant’s arguments
and the evidence in the Green and Jones declarations, submitted during prosecution,6 as relied on
by appellant in the brief. See generally, In re Johnson, 747 F.2d 1456, 1460, 223 USPQ 1260,
1263 (Fed. Cir. 1984); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984); In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
Appellant contends that the “bromotriester” process scheme of Grinter that we discuss
above, has been found to be “inconvenient for use on a large, commercial scale” because it
requires chromatography separations as set forth in Grinter Description 11 (brief, pages 6-7).
Appellant further submits that the only guidance in Grinter with respect to the dechlorination
step is found in the reference examples wherein the step is conducted before decarboxylation,
1992); In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968), presuming skill on
the part of this person. In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985).
6 In the preliminary amendment filed March 11, 1999 (Paper No. 2), appellant submitted an
unsigned copy of the declaration by Green stated to be originally filed in parent application
08/732,479, filed October 18, 1996. A further copy of this declaration submitted with the brief is
signed and has an execution date of “15th Dec 1999.” The Jones declaration, executed on
December 20, 1999, is directed to the present application and was filed July 27, 2000 (Paper
No. 10).
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