Appeal No. 2005-0393
Application 09/536,728
Here, we find that the issue of obviousness stands on a different footing than that
which is discussed above. We agree with the examiner that given the teachings of
York, it would have been obvious to one of ordinary skill in the art to replace the
hydrogen atom at position R3 of the compound set forth in Example V [of York] with a
lower alkyl group. We find that the suggestion to replace said hydrogen atom (with a
lower alkyl) is provided by the patent itself. That is, Example V identifies all the
substituents present in the compound set forth in representative claims 21 and 39, with
the exception of the lower alkyl group at position R3. In this regard attention is directed
to the compound set forth as formula I at col. 1, lines 57-65. The formula I compound is
the same as Example V when the appropriate R groups are added. With respect to R3
(col. 2, lines 5-10), we find that York discloses that R5 can be a hydrogen or a lower
alkyl (and R7 can be a hydrogen). Thus, York discloses that a hydrogen atom and a
lower alkyl at position R3 of formula I (a.k.a. Example V) are interchangeable.
Accordingly, we conclude that given the teachings of York, it would have been obvious
to one of ordinary skill in the art to substitute the hydrogen atom at position R3 with a
lower alkyl of formula I/ Example V to arrive at the compound set forth in representative
claims 21 and 39. To the extent that our reasoning differs from that of the examiner, we
denominate our affirmance as a new ground of rejection. See, 37 C.F.R. § 41.50(b).
III.
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