Appeal No. 95-2993
Application 08/019,387
by the majority, appellants disclose in their specification at page 1, lines 26 through 28
that 8,9-dehydroestrone:
is known to possess estrogenic activity and to lower blood lipid levels
(Examples 11 and 12; US 3,391,169).
In my view, this disclosure constitutes an admission by appellants that one of the
compounds of their claimed method was known at the time appellants' invention was made
to possess utility which prima facie would have indicated said compound would be
expected to be useful in treating atherosclerosis. That is, 8,9-dehydroestrone is known to
possess estrogenic activity and the ability to lower blood lipid levels. Accordingly, I find
claims 9 through 12 would have at least been prima facie obvious from Hughes et al.
By making a rejection under 37 C.F.R. § 1.196(b), appellants and the examiner
would be required to proceed under well-recognized procedures set forth in the rule after
appellants elect either further prosecution before the examiner or rehearing before the
Board. The majority, by merely denominating issues which go the patentability of the
claims before us as "other issues" for the examiner and appellants to deal with as they
choose, are leaving the determination of the patentability of appellants' claims to another
forum. We should exercise our discretion, provide appellants with the safeguards of the
rule and make the rejection under 37 C.F.R. § 1.196(b).
Based on the same rationale as expressed above for exercising our authority under
37 C.F.R § 1.196(b), I would also reject appellants' claims 9 and 11 over the claims of
appellants' earlier patent, U.S. Patent Number 5,210,081 claims, on the grounds of
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