Appeal No. 2004-0245
Application 09/265,926
that the retention of the chloro substituent in the “6” position of the purine derivative
intermediates until the final step of the process is responsible for the “advantages of the instant
process” (brief, page 9; emphasis supplied).
The examiner submits that the Jones declaration fails to provide a “side-by-side
comparison” or “anything even close to a proper replication of the prior art process,” noting that
the declaration does not replicate the Grinter process because “[a] large numbers [sic, number] of
differences were introduced, differences which have nothing to do with claim requirements” and
“[t]he result of these differences was a failure to even obtain the prior art product” (answer,
page 8; emphasis supplied). The examiner finds that while the Grinter process and that shown in
the declaration begin at the same point and end with the same product, the product produced by
the process said to represent Grinter is “a crude oil (called ‘useless’ in the Appeal brief, page 12)
which . . . [declarant Jones was] unable to crystallize from n-butanol ([Jones declaration] page 6
[sic, 7], step 2, item vii),” in contrast to Grinter which discloses that “colorless crystals from n-
butanol, melting at 102°C” was obtained (id.; emphasis supplied). Thus, the examiner argues
that appellant’s “conclusion that the [Grinter] process yields only a useless brown oil is directly
contradicted by the fact that [Grinter] did in fact produce the compound as colorless crystals of
the correct melting point” (id.).
The examiner contends that declarant Jones failed to “properly replicate” three steps of
the process attributed to Grinter, and in this respect, finds nine (9) substantial differences
between the process representing Grinter in the Jones declaration and the disclosure of Grinter
(answer, pages 9-13). We agree with the examiner’s findings. We note, for example, the finding
with respect to “Stage 1, step 3, the decarboxylation of the triester” in the scheme on page 5 of
the declaration representing the process of Grinter, that the reason for the transesterification step
used has not been explained by declarant Jones, and is not required by appealed claim 10 or by
either Description 12 or Example 3 of Grinter (answer, pages 9-10). Indeed, we find no
transesterification step specified in appealed claim 10 and the only transesterification that we
find in Grinter involves a process which is not relied on in this appeal (see above note 3). We
also particularly note the differences in the purification and workup steps pointed out by the
examiner.
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