Appeal No. 2003-1245 Page 2
Application No. 09/467,292
Karanewsky et al. (Karanewsky) 5,552,397 Sep. 3, 1996
Robl et al. (Robl), “Dual Metalloprotease Inhibitors, 6. Incorporation of Bicyclic and
Substituted Monocyclic Azepinones as Dipeptide Surrogates in Angiotensin-converting
Enzyme/Neutral Endopeptidase Inhibitors,” J. Med. Chem., Vol. 39, pp. 494-502 (1996)
Claims 1 through 13 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Robl or Karanewsky.
Discussion
The examiner’s rejection is based on the premise that each cited reference
discloses “ring position isomers” of applicants’ claimed compounds (“the claimed
compounds differ from the prior art compounds by being ring position isomers”). Paper
No. 22, page 4, lines 3 and 4. The examiner argues that it would have been prima facie
obvious to modify the compounds of Robl or Karanewsky by moving variable R2
(Applicants’ nomenclature) to the 5-position of the azepinone ring. By modifying the
prior art compounds in this manner, according to the examiner, a person having
ordinary skill would have arrived at the claimed invention with a reasonable expectation
of providing useful cardiovascular agents.
The premise of the rejection, however, is flawed. On this record, the examiner
has not established that each cited reference discloses ring position isomers of
applicants’ claimed compounds. For example, the examiner invites attention to Robl,
page 497, Table 2, compounds having Formula 2. But those compounds have a benzyl
group at the "-position of the amide substituent on the illustrated azepinone moiety. As
correctly pointed out by applicants, in claim 1 on appeal, variable R3 at the "-position of
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