Appeal No. 95-3117
Application 08/096,207
acknowledges that persons skilled in the art had sought to
obtain “compounds that might be non-clinically more useful
(i.e., longer biological half-life, better specificity for
AChE rather than BChE) than
(-)-physostigmine” (Yu I, p. 127, col. 1, and p. 128, Table 1,
“IC BChE/IC AChE”). The degree of selectivity is patentably50 50
significant indeed. See In re Papesch, 315 F.2d 381, 391,
137 USPQ 43, 51 (CCPA 1963)(“From the standpoint of patent
law, a compound and all of its properties are inseparable;
they are one and the same. . . . There is no basis in law for
ignoring any property in making . . . a comparison. An
assumed similarity based on a comparison of formulae must give
way to evidence that the assumption is erroneous.”) On
consideration of all the evidence, especially the significant
properties of the compounds claimed, we reverse the examiner’s
rejection.
However, the examiner may wish to give Atack’s teaching a
closer look, especially Atack’s discussion at pages 198-201
(Carbamoyl-substituted analogs.) of the expected effect of
increasing the hydrophobicity of the carbamoyl side group on
the potency of a compound toward human and eel AChE and BChE.
We decline to decipher this teaching de novo. See In re Hoch,
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