Appeal No. 95-2993
Application 08/019,387
known in the art. Accordingly, we conclude that the specification disclosure as to the
estrogenic activity of the claimed compounds would have enabled those skilled in the art to
use the claimed compounds for the treatment of estrogen-related disorders and
atherosclerosis.
In view of the foregoing, the rejection is reversed.
Other Issues
We note that claims 9 and 11 are directed to the treatment of atherosclerosis using
8,9 dehydroestrone. To that end, we direct attention to our discussion, above, that the
specification refers to a U.S. patent for its disclosure that 8,9 dehydroestrone is known to
possess estrogenic activity and to lower blood lipid levels. Specification, p. 1, lines 23-28.
In their brief, the appellants state that 8,9 dehydroestrone (i) is known to possess
estrogenic activity (is an active steroid) and that persons skilled in the art know how to use
such compounds without detailed instruction (Brief, para. bridging pp. 2-3), and (ii) is a
useful antilipidemic agent as shown by U.S. 3,391,169 (Brief, p. 4, last para.).
In view of these admissions, upon return of this application to the corps, the
examiner and the appellants should consider whether it was known in the art to use 8,9
dehydroestrone in the methods described in claims 9 and 11. Alternatively, the examiner
might wish to consider whether the teachings of the referenced U.S. patent
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