Appeal No. 95-0885
Application 07/725,327
we agree with the examiner that Hindley teaches closely related compounds possessing the
thiazolidine moiety as claimed by appellants.
The examiner concluded that the compounds recited in claim 1 would have been obvious over
Hindley because the patentee discloses thiazolidine derivatives that can be used to treat hypertension.
Appellants’ principal argument is that Hindley’s hypertension is not essential hypertension as required
by the claims on appeal. Appellants contend that those skilled in the art would have recognized that
hypertension is not synonymous with essential hypertension, that there is no reasonable expectation
that thiazolidines would be useful to treat essential hypertension, and that, at best, Hindley provides
an invitation to experiment. Appellants argue that “where Hindley refers to ‘hyperlipidemia,
hypertension, cardiovascular disease, and certain eating disorders’ one of ordinary skill would
understand this to be a suggestion that treatment of diabetes with thiazolidines may also be useful to
ameliorate the signs and symptoms that are secondary to the diabetes” (brief, p. 9). Appellants rely
on declarations by Dr. Kurtz, M.D. (hereinafter the Kutrz I declaration ), one of the named inventors,4
and a declaration by Dr. Mark, M.D. (the Mark declaration) to support their arguments.
Both the Mark and Kurtz I declarations state that “[e]ssential hypertension is a specifically
diagnosed clinical disorder and hypertension is a ‘sign’ [symptom] of many other clinical disorders”
(Mark declaration, ¶6(a) and Kurtz I declaration, ¶5(a)). Appellants define essential hypertension
4Two declarations were submitted by Dr. Kurtz during prosection. One declaration (the Kurtz I declaration)
was submitted on July 2, 1993 and assigned Paper No. 14. The other declaration (the Kurtz II declaration) was
submitted on November 23, 1993 and assigned Paper No. 18. The Kurtz II declaration is not relevant to our decision
here since it is directed to an interpretation of the Kotchen, Meehan and Fujiwara references which are not before us.
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