Appeal No. 1997-1280 Page 6
Application No. 08/356,912
Appellants have asserted that there is a showing of unexpected properties in the
Declarations of record. We determine that the argument is unpersuasive, because the
species utilized in the Declaration, N-[2,3-dihydro-2-(1-pyrrolidinyl)-1H-inden-1-yl]-3,4-
dimethoxy-N-methyl-benzene- acetamide, representative of the prior art, is not prepared by
Pennev. Moreover, Pennev clearly teaches another species, N-[2,3-dihydro-2-(1-
pyrrolidinyl)-1H-inden-1-yl]-3,4-dichloro-N-methyl-benzene- acetamide within the scope of
the claimed subject matter other than for the presence of the 3,4-dichloro groups. See
Example 6. We determine that Example 6 is the closest example to the claimed subject
matter. Moreover, the compound of Example 6, is also one of the appellants preferred, but
unclaimed compounds. See specification, page 5, lines 6-8. Hence, the comparative
examples which fail to include that compound do not reflect the closest prior art relied upon
in our opinion. In re Baxter Travenol Labs., 952 F.2d 388, 392, 21 USPQ2d 1281, 1285
(Fed. Cir. 1991); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir.
1984). In addition, it is well settled that direct or indirect testing between the claimed
compounds and the closest prior art may be necessary. In re Merchant 575 F.2d 865,
869, 197 USPQ 785, 788 (CCPA 1978).
Furthermore, each of the tests conducted by declarant Fortin, uses the same single
species of prior art compound. i.e., N-[2,3-dihydro-2-(1-pyrrolidinyl)-1H-inden-1-yl]-3,4-
dichloro-N-methyl-benzene- acetamide. It is well settled that, “where an applicant tests less
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007