Appeal No. 94-3351
Application 07/919,679
and King at column 7, lines 38 through 54), albeit neither Watts
nor King specifically indicates that these prior art compounds
exhibit 5-HT agonist activity, as possessed by some of the
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compounds covered by the appealed claims. In this regard, on
remand, the examiner should indicate why appellants’ finding at
paragraphs 4.6 and 4.7 of the Flynn declaration that a compound
covered by the appealed claims exhibits approximately 3.5 times
more 5-HT agonist activity than the preferred compound of Watts
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would not have been unexpected to a person of ordinary skill in
this art. Compare In re Chupp, 816 F.2d 643, 646, 2 USPQ2d 1437,
1439, (Fed. Cir. 1987) wherein the court held that evidence that
a compound is unexpectedly superior in one of a spectrum of
common properties can be enough to rebut a prima facie case of
obviousness.
The examiner should also consider, on remand, whether or not
the comparative showing in the Flynn declaration, which is
limited to a single compound covered by the claims (a salt having
0.4 H O), is reasonably commensurate in scope with any claim
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presented on appeal.
On remand to the examiner, the examiner should consider
whether there is any factual support for rejection of the
appealed claims based on the relied upon prior art references
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