Appeal No. 2004-0245
Application 09/265,926
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of obviousness found in Grinter with appellants’ countervailing evidence
of and argument for nonobviousness and conclude that the claimed invention encompassed by
appealed claims 6, 7 and 10 through 13 would have been obvious as a matter of law under
35 U.S.C. § 103(a).
Turning now to the grounds of rejection of appealed product claim 5 under §§ 102(b) and
103(a), we have carefully considered the positions advanced by the examiner and appellant. We
refer to our analysis of the teachings of Grinter vis-à-vis the limitations of appealed claim 10
above, which includes the findings with respect to the various definitions of formula members of
different formulas relied on by the examiner to establish the manner in which Grinter would have
disclosed the claimed compound encompassed by claim 5 (answer, pages 3-6). Unlike the facts
of In re Sivaramakrishnan, 673 F.2d 1383, 213 USPQ 441 (CCPA 1982); In re Schaumann,
572 F.2d 312, 316-17, 197 USPQ 5, 9-10 (CCPA 1978); and In re Petering, 301 F.2d 676, 682,
133 USPQ 275, 280 (CCPA 1962), in this appeal the issue of whether Grinter provides a pattern
of preferences which results in a description of the claimed compound as if the same was
described by name therein, requires consideration of the teaching of the reference with respect to
the use of the compounds defined by the formulae in the processes taught therein. In this
respect, we found above that Grinter discloses with respect to scheme “(i),” that “R2” and “R3”
of formula (II) are chloro and amino, respectively, but then subjects the intermediate prepared
therefrom to hydrogenolysis to form formula (VI), and upon decarboxylation formula (I),
wherein “R2” is hydrogen in each instance (see above p. 5; see also brief, page 6).
Thus, we are of the opinion that taken as a whole, the teachings of Grinter do not as a
matter of fact described the claimed compound encompassed by appealed claim 5 within the
meaning of § 102(b), and accordingly, reverse this ground of rejection.
However, as pointed out by the examiner (answer, pages 5-6), prima facie, the same facts
would have reasonably described the claimed compound encompassed by appealed claim 5 to
one of ordinary skill in this art because, as we found above (see pp. 5-6), Grinter makes clear
that substituents in the “R2” or “6” position can be, inter alia, chloro and generally teaches
modifications to the processes disclosed therein which retain the chloro substituent in that
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