Appeal No. 1996-2790
Application 08/102,176
Rajadhyaksha generically describes these fifteen compounds as increasing rather than
decreasing penetration or absorption of active agents through the skin of a mammal.
Appellants argue that Rajadhyaksha did not actually test the N-acyl substituted 2-
oxazolidinones to which the claims on appeal are now limited, stating at page 11 of the
Appeal Brief:
Appellants tested N-dodecanoyl-2-oxazolidinone in the cell diffusion
assay and surprisingly discovered that this compound repeatedly
decreased, rather than enhanced, penetration of active agents. The
evidence submitted in the application as filed establishes that
N-dodecanoyl-2-oxazolidinone decreases penetration of active agents/toxic
chemicals as asserted by Appellants. This evidence does not contradict any
scientific data disclosed in the Raj patents. Rather, Appellants' results
contradict Raj's expectation that N-dodecanoyl-2-oxazolidinone would
function equivalently to other heterocyclic ketone derivatives that enhance
skin penetration.
The working examples of the present specification provide evidence that a specific
compound used in the present invention, N-dodecanoyl-2-oxazolidinone, functions to
decrease the penetration or absorption of active agents through the skin of a mammal. In
making the enablement rejection, the examiner has not questioned or disputed this
evidence. Having accepted this evidence, it became incumbent upon the examiner to
explain why one skilled in the art would not expect the same or similar effect to occur
through the use of the other fourteen compounds set forth in the claims on appeal. The
examiner has not done so.
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