Appeal 2006-3252
Application 09/536,728
1 F. Analysis
2 Examiner’s § 103 rejection based on Stähle
3 The difference between the subject matter of Esser generic claim 73
4 and Stähle is that the 3-amino group of Stähle is not substituted with any
5 alkyl group, e.g., a methyl group. The Esser R2 group is ―NR6R7 where R6
6 cannot be hydrogen. Thus, the Esser R2 amino group is a substituted amino
7 group, with the simplest Esser substitution being a methylamino group, i.e.,
8 ―NHCH3 whereas Stähle group is amino, i.e., ―NH2.
9 The Examiner reasoned that it would have been obvious to replace a
10 hydrogen with a lower alkyl group on a nitrogen atom. Examiner's Answer,
11 page 7. The Examiner does not rely on prior art, including any teaching of
12 Stähle, to support his reasoning. Rather, the Examiner cites Ex parte
13 Weston, 121 USPQ 428 (Bd. App. 1958) and In re Hoeksema, 399 F.2d 269
14 (CCPA 1968).
15 A resolution of a question of obviousness is necessarily and intimately
16 tied to the precise facts in each case. The facts here are not the facts in
17 Weston.
18 In our opinion and on this record, a person having ordinary skill in the
19 art would not have had a technological reason for believing that compounds
20 beyond those specifically described by Stähle would be useful for Stähle's
21 purpose. The broadest description of the Stähle invention involves the use
22 of a limited number of compounds as hypotensives. The "generic" formula
23 of the Stähle compounds is limited to compounds having the formula:
19
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