Appeal 2007-0549
Application 10/399,312
solvents can be used in preparing bis-benzoxazolyl-stilbene compounds
from either dicarboxylic acids or their acid chloride derivatives.
Because Erckel discloses that N-methylpyrrolidone and dimethyl
formamide can be used equivalently in preparing bis-benzoxazolyl-stilbenes
from acid chloride intermediates, and because Liechti teaches that the same
solvents can be used to prepare the compounds from dicarboxylic acids or
their acid chlorides, we agree with the Examiner that it would have been
obvious to substitute Erckel’s N-methylpyrrolidone for Liechti’s dimethyl
formamide.
Appellants argue that Liechti does not provide a working example
using dimethyl formamide in the preparation of bis-benzoxazolyl-stilbene
compounds, and instead provides a “very generic and broad” list of solvents
suitable in the described processes (Br. 5-6). Appellants point out that
Liechti’s working examples of ring formation reactions use either
dichlorobenzene or xylene in the condensation reaction, followed by
cyclization in phthalic acid dibutyl ester (id. at 6). Thus, “[a]s
dimethylformamide is only very generically disclosed in Liechti, Appellants
assert that one skilled in the art cannot arrive at the present invention from
the combination of Liechti and Erckel” (id.).
We agree with Appellants that Liechti does not appear to use dimethyl
formamide in working examples of the reactions of the type recited in claim
1. However, it is well settled that, “in a section 103 inquiry, ‘the fact that a
specific [embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be
considered.’” Merck & Co. v. Biocraft Labs. Inc., 874 F.2d 804, 807, 10
7
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