Appeal No. 2003-1034 Page 5
Application No. 08/897,455
rejection. The rejection is not reversed, however, because, as we note above,
the teachings of that reference appear to be relevant to the patentability of the
claimed methods.
We are also vacating the rejections over Page, Bowers and Oughton.
With respect to the rejection of claims 11-17 under 35 U.S.C. § 103(a) as obvious
over Page, the examiner states:
Page [ ] generically teach[es] 17,21-dicarboxylic acid esters
of 4-pregnen-3,20-dione having an oxo, halogen or a hydroxyl
group in the 11-position and substituents in the 6, 9 and 16
positions which include those recited by the claimed invention. The
reference teaches the compounds may also contain a double bond
in the 1-position and the use of the compounds in the treatment of
corticosteroid-responsive dermatosis.
The instant claims differ from the reference by reciting
specific species not exemplified by the reference, i.e., compounds
wherein R(1) is phenyl which may be substituted as indicated by
the claimed invention. However, the generic disclosure of Page
suggests most of the substituents of the claimed “Markush”
structure including the claimed aralkyl ester group attached to the
21-position. Page discloses compounds of formula (I) wherein R5 is
OC(O)-R’’, wherein R’’ is an alkyl group of 1 to 16 carbon atoms, a
phenyl group or an aralkyl group of 7 to 8 carbon atoms (i.e., -
(CH2)1-2-phenyl). Applicant’s claimed compound defining R(1) as a
phenyl group is thus within the scope of the disclosure of Page [ ].
The motivation to make the claimed compounds is based on the
desire to make additional compounds useful in the treatment of
corticosteroid-responsive dermatosis as taught by the prior art.
Examiner’s Answer, pages 3-4 (citations omitted).
The rejection over Page suffers from the same deficiencies as the
rejection over Djerassi. Again, a broad disclosure of a genus does not render
any species that falls within it obvious, rather, there need be some teaching or
suggestion to lead the ordinary artisan to select the claimed compound. The
examiner asserts in the response to arguments that sixteen of the thirty-three
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