Appeals 2006-1443 and 2006-1465
Reexamination Control Nos. 90/004,950 and 90/005,200
1 The Wuest declaration was filed on or about 2 September 2005.
2 Dr. Wuest has a Ph.D. in organic chemistry.
3 In Dr. Wuest’s opinion none of the prior art cited by the Examiner describes or
4 suggests introducing an acyl group into an amino group of a “Molecule” as called for by
5 claim 1 on appeal.
6 As noted earlier, we do not find it necessary to discuss or rely on the prior art
7 cited by the Examiner.
8 Accordingly, we have no occasion to assess the weight to be given Dr. Wuest’s
9 opinions with respect to that prior art.
10 Dr. Wuest seems to be of the opinion that, prior to considering the Ochiai
11 specifications, a person having ordinary skill in the art would not have had a reasonable
12 expectation that the process of Ochiai ‘216 claim 1 would be successful.
13 As explained in Paragraph 15 of his declaration, Dr. Wuest suggests that one
14 skilled in the art would have expected that “self-condensation” would occur.
15 What is “self-condensation”?
16 What Dr. Wuest suggests is that a person having ordinary skill in the art might at
17 first blush believe that the compound with acyl group of Ochiai ‘216 claim 1 would react
18 with itself and not the “Molecule” of claim 1. Why? Because (1) the compound has both
19 an acyl group (e.g., —COOH) and an amino group (e.g., —NH2) and, (2) as noted above
20 and known in the art, acyl groups react with amino groups to form amide groups, in this
21 case a group with the formula —CONH—.
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007