Appeal No. 2006-2378 Page 10
Application No. 10/433,388
process enables the compounds of the present invention to be conveniently prepared
from readily available materials in high yield.” Column 7, lines 60-62.
Thus, as we understand it, Nordal discloses the desirability of synthesizing
compounds of formula (I) using the opposite order of the steps recited in Appellants’
claims 1 and 2. As with WO ‘372 and JP ‘211, we see nothing in Nordal suggesting that
the process of preparing the compound of formula (I) could or should be practiced by
reversing the order of the amidating and reducing steps.
To summarize, the rejection does not provide a fact-based analysis explaining
why one of ordinary skill in the art would have performed the claimed steps in the
claimed order. Moreover, the cited references do not suggest that ordering the steps
as in the claimed process would have been desirable or equivalent to prior art methods.
Because the examiner did not make out a case of prima facie obviousness, we reverse
the obviousness rejection of claims 1-11.
Other Issues
Claims 9-11 appear to be improper multiple dependent claims. 37 CFR 1.75(c)
states that “[a]ny dependent claim which refers to more than one other claim (‘multiple
dependent claim’) shall refer to such other claims in the alternative only.” (Emphasis
added.) Claim 10 recites “[t]he process of claim 9 . . . which process comprises . . .
preparing [or] manufacturing an intermediate . . . by the process of any of prece[]ding
claims 1 to 8.” Thus, claim 10 simultaneously depends from claim 9 and any of claims
1-8. Claim 11 contains the same prohibited dependency structure.
37 CFR 1.75(c) also states that “[a] multiple dependent claim shall not serve as a
basis for any other multiple dependent claim.” However, each of claims 9-11 depends
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