Appeal No. 95-1618
Application 08/033,456
Formula I. Said plurality of possible compounds have a multitude of divergent
chemical functionalities which would be expected to effect observed physical
properties important to pharmacological utility. Applicants’ own argument of 3-18-
93 is that the mere substitution of a nitrogen atom for a carbon atom in a core
oxindole structure to produce the corresponding azaoxindole would not be expected
to result in similarly useful compounds. Thus, similar or more drastic differences
between species encompassed by applicants’ generic disclosure would necessitate
proof of utility beyond a mere allegation since common utility would not be expected
by one of ordinary skill.
Appellants argue that there is support for utility throughout the specification. They point to
the abstract and written description of the invention which refer to the compounds of the invention
as being useful as antiinflammatory and analgesic agents; as inhibitors of postaglandin H synthase,
2
5-liposygenase, and interleukin-1-biosynthesis; and for the treatment of chronic inflammatory
diseases, allergy, psoriasis, various bone diseases, and immune dysfunctions such as systemic lupus
erythema-tosis. They also refer to a detailed assay procedure set forth in the specification at page
31, line 15 to page 34, line 40 showing the ability of the claimed compounds to inhibit interleukin-1
biosynthesis, prostaglandin H synthase, and 5-lipoxygenase, and to page 35, lines 4-15 for a demon-
2
stration of the antiinflammatory and analgesic activity of the claimed compounds.
In response to appellants’ arguments in the Brief, the examiner states he “doubts the objective
truth” the utility asserted by appellants. On page 8 of the Answer, the examiner states that his doubt
is
based on the fact that the compounds encompassed by the language “all tautomers
and geometric isomers of the compounds of formula I” are sufficiently different so
that one of ordinary skill would not expect them to have the same pharmacological
properties and therefore would not expect these compound to have the alleged utility
attributed to the compounds of formula I. Appellants’ arguments regarding utility are
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