Appeal 2007-1821
Application 11/040,964
Once prima facie obviousness has been established, an applicant for a
patent can rebut it with “a showing of ‘unexpected results,’ i.e., to show that
the claimed invention exhibits some superior property or advantage that a
person of ordinary skill in the relevant art would have found surprising or
unexpected. The basic principle behind this rule is straightforward – that
which would have been surprising to a person of ordinary skill in a particular
art would not have been obvious.” In re Soni, 54 F.3d 746, 750, 34 USPQ2d
1684, 1687 (Fed. Cir. 1995). In this case, we find insufficient evidence that
the duration test results described by Dr. Blye were “surprising” to a person
of ordinary skill in the art.
The “unexpected results” are based on a comparison of the claimed
compound to Cook’s 7α,11β-dimethyl-19-nortestosterone enanthate in an
experiment designed to determine long lasting activity when administered
parenterally to rats (Br. 4). To begin our analysis, we consider what degree
of androgenic activity the skilled worker would have expected the 7α,11β-
dimethyl-19-nortestosterone enanthate to possess – the compound which
Appellants admit to be the closest prior art. Cook states:
The further importance of the concomitant 11β-methyl group is
shown by the androgenic RBA of 194 for 7β,11β-dimethyl-19-
nortestosterone and the marked increase in acute androgenic
activity of this compound as compared with 7α-methyl-19-
nortest[ost]erone (see Table 1) and of the greater potency and
longer duration of action of the enanthate ester of 7α,11β-
dimethyl-19-nortestosterone as compared with testosterone
enanthate (See Table 2).
(Cook, col. 18, ll. 43-52.) (Emphasis added.) Table 2 (Cook, col. 19-20)
shows that the 7α,11β-dimethyl-19-nortestosterone enanthate (the compound
asserted by Appellants to be the closest prior art) was active over a ten-week
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