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Ex parte PERSHADSINGH et al. - Page 10
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Board of Patent Appeals and Interferences > 1997 > Ex parte PERSHADSINGH et al. - Page 10
Appeal No. 95-0885
Application 07/725,327
We do not find these reasons persuasive. We find, for reasons already given, that the ordinary
meaning of the term “hypertension” would include “essential hypertension.” Moreover, Hindley
does not qualify his reference to “other diseases” as being limited to only those diseases associated
with Type II diabetes or hyperglycemia. In view of the definition of “hypertension” supra, we find
nothing in the context of Hindley’s disclosure which would have lead one skilled in the art to such
a limited interpretation. Even assuming that one skilled in the art would have interpreted Hindley as
being limited to hypertension associated with Type II diabetes or hypoglycemia, neither appellants
nor the declarants have presented any evidence which would lend support for such an interpretation.
Hindley specifically discloses that his compounds can be used to treat hypertension, cardiovascular
disease and certain eating disorders (col. 9, lines 55-60) and that the “dosage regimens for the
treatment of hypertension, cardiovascular disease and eating disorders will generally be those
mentioned ... in relation to hyperglycemia” (col. 11, lines 6-9). We conclude that Hindley would have
reasonably suggested to one having ordinary skill in the art to expect that the disclosed
thiazolidinedione derivatives would be useful to treat “essential hypertension.” Obviousness does
not require absolute predictability, but only the reasonable expectation of success. In re Clinton, 527
F. 2d 1226, 1228, 188 USPQ 365, 367 (CCPA 1976); In re Kronig, 539 F.2d 1300, 1304, 190 USPQ
425, 428 (CCPA 1976); In re Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976).
Accordingly, for the foregoing reasons we conclude that the examiner has made out a prima
facie case of obviousness over Hindley as to claims 1-7 and 9-17 because it is reasonable over the
teachings of Hindley that one skilled in the art would have had a reasonable expectation of success
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Last modified: November 3, 2007
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