Appeal No. 2003-1991 6
Application No. 09/412,258
It is the examiner’s position that, “[t]he activity relied upon here, however, relates
to known compounds known to possess the activity. By any definition a known property of
a known compound cannot be characterized as unexpected.” See Answer, pages 9-10.
On the record before us, we generally concur with the position by the examiner.
The appellants have presented a declaration directed not to the claimed
intermediate but to the final product possessing pharmacological properties relying heavily
upon In re Magerlein, 602 F.2d 366, 372-73, 202 USPQ 473, 479 (CCPA 1979) for
its teaching that, “the capacity of an intermediate to contribute to an end product that
feature which causes the end product to possess an activity or property that is unexpectedly
superior to that of a prior art end product is a ‘property’ that inures to the benefit of the
intermediate and that can be considered as part of the ‘subject matter as a whole’ in
determining the nonobviousness of the intermediate.”
Although, the submission of data directed to the end product in the case before us,
would generally appear to be appropriate, in our view the facts before us are
distinguishable from those of In re Magerlein cited above. On the record before us, the
appellants admit that racemic isobutyl GABA was prepared in 1989. See specification,
page 3, lines 1-3. They further admit that it was known in 1994 that the stereo selective
isomer (S)-isobutyl GABA has anticonvulsant activity. See specification, page 2, lines 13-
20.
Furthermore, the appellants have attached to the declaration of Charles P. Taylor a
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