In re Hoeksema

Opinion

 [****597]   [**270]  [*1495]   Before WORLEY, Chief Judge, and Judges RICH, SMITH, ALMOND, KIRKPATRICK. ¹ 

SMITH, Judge, delivered the opinion of the court:

In our prior consideration of this appeal, we affirmed the decision of the Patent Office Board of Appeals, which had affirmed the examiner's rejection of the sole remaining claim of appellant's application, ² In re Hoeksema, 54 CCPA 1618, 379 F.2d 1007, 154 USPQ 169 (1967). Because of the continuing importance of the questions involved, and the strong suggestion of error in our earlier opinion, we granted appellant's petition for a rehearing under the provisions of Rule 7 of this court, 55 CCPA - (October 5, 1967).

The parties [***2]  filed new briefs, and the case was reargued on January 3, 1968. Upon reconsideration of our previous decision, we have concluded that our previous decision was erroneous and that a proper resolution of the issues requires that we reverse the decision of the board.

The facts are set forth in our original opinion. We shall assume familiarity with that statement of facts and shall here redevelop only those which we now believe were previously misapprehended or misapplied and require the present decision.

The sole claim on appeal is directed to a chemical compound and reads as follows:

1. An N-psicofuranoside having the formula:

 [****598]  [Graphic omitted. See illustration in original.]

wherein A is selected from the class consisting of hydrogen, the group -XR wherein R is selected from the class consisting of hydrogen, lower-alkyl, and lower-aralkyl, and X is selected from the class consisting of oxygen and sulfur, and the group [Graphic omitted. See illustration in original.] wherein R(2) is selected from the class consisting of hydrogen, lower-alkyl, lower-aralkyl, and lower-aryl, and R(3) is selected from the class consisting of lower-alkyl, lower-aralkyl, and lower-aryl,  [***3]  and R' is selected from  [*1496]  the class consisting of hydrogen, a hydrocarbon carboxylic acid acyl radical containing from two to twelve carbon atoms, inclusive, and a halo-, hydroxy-, lower-alkoxy-, amino-, cyano-, thiocyano-, and nitro-substituted hydrocarbon carboxylic acid acyl  [**271]  radical containing from two to twelve carbon atoms, inclusive.

That claim stands rejected under 35 USC 103 as unpatentable over prior art, on this record limited solely to the De Boer et al. patent ³ (De Boer) which discloses a compound with the structural formula:

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