Appeals 2006-1443 and 2006-1465
Reexamination Control Nos. 90/004,950 and 90/005,200
1 way to use his “potential” or “possible” reaction schemes when there is a detailed and
2 straightforward reaction scheme described in the Ochiai specifications. Appellants have
3 not shown us that the Wuest alternative processes may be described in the family of
4 Ochiai applications. On this record, it would appear that the Wuest alternative method is
5 a post-litigation afterthought, particularly given the 1982 date of Morin when compared
6 to the 1975 filing date of the first Ochiai application. We cannot say that the Examiner
7 did not have a sufficient basis for finding that the Wuest testimony was “speculative” and
8 we do not think it is our role in this case to second-guess the Examiner’s assessment of
9 the Wuest testimony. The Examiner works in the art area day to day; we do not.
10 When pressed at oral argument, counsel for Appellants maintained that
11 Ochiai ‘606 describes at least two methods for making the cephems of claim 1 of
12 Ochiai ‘606. Tr-6:18 et seq. A first method is reacting compound VI with compound V.
13 Ochiai ‘606, col. 2, lines 26-29 and col. 6, line 55 through col. 7, line 62. A second
14 method is reacting compound IX with a “nucleophilic” compound. Ochiai ‘606, col. 2,
15 lines 33-35 and col. 8, line 32 through col. 9, line 24. A third method, not discussed at
16 oral argument, may be reducing compound VII. Ochiai ‘606, col. 2, lines 30-32 and col.
17 7, line 63 through col. 8, line 31.
18 Each of the three methods described in Ochiai ‘606 involves the use of the
19 process of claim 1 of Ochiai ‘216.
20 The first method involves reacting an acyl containing compound with an amine
21 “Molecule” as described in our findings.
22 The second method involves using Ochiai ‘606 compound IX (top of col. 2).
23 R6 of compound IX can be various organic moieties, including acyloxy, such as
21
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