Appeal No. 95-0885
Application 07/725,327
These compounds are also indicated to be of potential use for the treatment
and/or prophylaxis of other diseases including hyperlipidaemia, hypertension,
cardiovascular disease and certain eating disorders.
The Rejection2
Claims 1-7 and 9-18 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Hindley. According to the examiner, Hindley “clearly suggests the use of applicant’s claimed3
composition to be used to treat hypertension" (answer, p. 3).
Grouping of Claims
Appellants submit at page 1 of their brief that the appealed claims do not stand or fall
together. Claims 2-7 and 9-18 are dependent claims which are ultimately dependent on independent
claim 1. Appellants point out that the “elected species reads on claims 1, 2, 3, 4, 5 and 18” and that
the “remaining pending claims (claims 6, 7, and 9-17) claim genera distinct from the genus of the
elected species” (brief, p. 1). On page 18 of the brief, appellants state that they
... wish to point out that the thiazolidine derivatives utilized in the claimed methods
include species that are structurally distinct from the compounds of Hindley. For
2 In the final rejection (Paper No. 15), claims 1-17 were rejected under 35 U.S.C. § 112, first paragraph, as
lacking enablement and under 35 U.S.C. § 101 for lack of demonstrated utility. Both rejections have been withdrawn by
the examiner. See the advisory action dated December 8, 1993 (Paper No. 19).
3 Claims 1-17 were rejected under 35 U.S.C. § 103 over Hindley. In an amendment after final (Paper No.
22), claim 8 was cancelled and new claim 18 was added. In the advisory action (Paper No. 23), after the examiner
advised appellants that the amendment would be entered and noted that the status of the claims remained the same, i.e.
claims 1-17 were rejected. The examiner did not state the status of new claim 18. However, in the brief, appellants
appear to understand that the claims under rejection are claims 1-7 and 9-18 (brief, p. 1, ¶ I) and the examiner agreed
(answer, p. 1, ¶ 1). Accordingly, we consider that the rejection before us includes claim 18.
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