Appeal 2007-1821
Application 11/040,964
alpha position which has been linked to liver toxicity” (Br. 7). We do not
find this argument persuasive for several reasons. First, the asserted
advantage is a latent property of a compound which is suggested by Cook.
“Mere recognition of latent properties in the prior art does not render
nonobvious an otherwise known invention.” In re Baxter Travenol Labs.,
952 F.2d 388, 392, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991). Secondly, the
prior art already teaches 7α,11β-dimethyl-19-nortestosterone enanthate,
which lacks an alkyl group at the 17-alpha position, and thus would not
possess the toxic group that has been asserted to have been linked to liver
toxicity.
Summary
In sum, for the reasons articulated by the Examiner, we find that the
claimed compound would have been obvious to a person of ordinary skill in
the art at the time the application was filed. Appellants have not provided
sufficient evidence of secondary considerations to rebut the obviousness of
the claimed compound. We affirm the rejection of claim 75. Claims 76-80
fall with claim 75.
2. Claims 82-84
Claims 82-84 are directed to 7α,11β-dimethyl-17β-hydroxyestr-4-en-
3-one 17-undecanoate “in crystalline form.”
The Examiner asserts:
(a) Cook teaches the purification of the compounds (see
especially Example 3) and (b) purification by crystallization is
routine in the chemical and pharmaceutical arts and, thus, it
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