Appeal No. 94-4009 Paper No. 32
Application No. 07/953,716 Page 13
Claims 22-24 recite specific compounds that we found to be
specifically identified in the Fujikawa patents.
Unexpected results are not germane to an anticipatory
disclosure since the claimed subject matter is old in the art.
Kitahara's declaration cannot make an old invention new. We note,
however, that Kitahara's declaration is not effective for its
intended purpose. "[W]hen unexpected results are used as
evidence of nonobviousness, the results must be shown to be
unexpected compared to with the closest prior art." Baxter
Travenol, 952 F.2d at 392, 21 USPQ2d at 1285. Kitahara
provides results comparing Pravastatin and Clinofibrate, both
apparently unrelated compounds (see the figures in Paper No. 1
(Spec.) at 51 and Paper No. 16 at 2), with Test Compound 1
(see Paper No. 1 (Spec.) at 51). The closest related compound
in the prior art is the last I-2 compound in Table 1 of the
'930 Fujikawa patent (11:65), where the carboxyl group has
condensed with the 5-hydroxy to form a lactone (see Fujikawa
'930, 12:14-17, teaching administration in the lactone form).
The evidence of record indicates that a comparison with the
closest prior art compound, Fujikawa '930 I-2, which is
identical to Test Compound 1, would have revealed no
difference at all. Just as unexpected beneficial results
support unobviousness, expected beneficial results suggest
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