Appeal No. 1997-1954
Application 08/154,903
The examiner relies upon Flaugh as describing the melatonin derivatives required
1
by the claims on appeal. The examiner reasons that it would have been obvious to one of
ordinary skill in the art at the time of the instant invention to treat desynchronization
disorders using the melatonin derivatives taught by Flaugh since Short discloses in column
7, lines 59-68 that other melatonin analogs possessing the same activity as melatonin can
be used to treat such disorders.
Our review of the record indicates that neither appellant nor the examiner have
appreciated the full relevance of the passage found in column 7, lines 59-68 of Short. This
passage refers to a publication by Frohn as describing the melatonin analogs which Short
would consider useful in that invention. Neither appellant nor the examiner have retrieved
and discussed this reference on the record. This is disappointing in that the claims on
appeal require specific melatonin analogs, not just melatonin analogs in a functional
sense.
While our disappointment extends to both the examiner and appellant in this regard,
we are especially disappointed in appellant. Appellant (Appeal Brief, page 7)
characterizes Short’s disclosure of melatonin analogs which would be useful in that
invention as being a “nebulous collection of compounds” or “unbounded.” This is incorrect.
Short refers to Frohn as describing specific melatonin analogs. We point out that
1The Flaugh patent appears to appellant’s own work as both the patent and this
application name Michael E. Flaugh as sole inventor and are commonly assigned.
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