Appeals 2006-1443 and 2006-1465
Reexamination Control Nos. 90/004,950 and 90/005,200
1 Dr. Wuest illustrates his concern in the chemical reaction set out in Paragraph 15
2 of his declaration where it is suggested that the Compound of Ochiai ‘216 might become
3 involved in self-condensation more or less according to the chemical equation:
4 n H2N—R—COOH ——► H2N—(R—CONH)n-1—R—COOH
5
6 Dr. Wuest does not satisfactorily explain why one skilled in the art would have
7 expected the “hindered” amine group attached to an aromatic-like group on the
8 compound also having the acyl would have been expected to be more reactive than the
9 primary amine group attached to the molecule.
10 Dr. Wuest expressed other reasons why, absent the Ochiai specifications, one
11 skilled in the art would not have expected the Ochiai ‘216 claim 1 process to be
12 successful.
13 However, Dr. Wuest acknowledges that one skilled in the art would have been
14 able to carry out the process of claim 1 of Ochiai ‘216 as described in the specification of
15 Ochiai ‘216. Wuest declaration, Paragraph 43.
16 In fact, Dr. Wuest goes on to tell us that based on “references” published between
17 1989 and 1997 one skilled in the art would have been able to carry out the process of
18 Ochiai ‘216 claim 1 as described by Ochiai ‘216 notwithstanding any concerns expressed
19 in the prior art. Wuest declaration, Paragraph 44.
20 Dr. Wuest testified that “there are various possible alternative pathways for
21 making the cephem compound of claim 1 of the ‘216 patent.” Wuest declaration,
22 Ex. 1001, Paragraph 50.
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