Appeal No. 1997-1954
Application 08/154,903
appellant, in his previous patent relied upon by the examiner, discusses Frohn and
distinguishes the melatonin analogs of Frohn from those described and claimed in his
patent. See column 1, lines 38-45 of Flaugh. Why neither the examiner nor appellant took
the time and effort to obtain and consider Frohn in this case can not be determined from
this record. We have retrieved and evaluated Frohn and as one would suspect it is very
relevant in determining the patentability of the claims on appeal.
Given the state of this record, we see no reason to expend the resources of the
Board to determine whether the examiner’s rejection of the claims under 35 U.S.C.
§ 103 is proper. Accordingly, we vacate the examiner’s prior art rejection in lieu of the
remand set forth below.
REMAND
1. SHORT AND FROHN
Frohn teaches that various melatonin analogs possess an activity similar to
melatonin itself. Specifically, compound XVII described on page 2045 of Frohn appears
to fall within the definition of the compounds used to treat desynchronization disorders
according to the method recited in claims 1 through 4, 7 and 18 through 22. Since Short
indicates that the melatonin analogs described in Frohn which have melatonin activity are
useful in that invention, it would appear that the method set forth in these claims is at the
least suggested by these two references.2
2Neither the examiner nor appellant have separately discussed the dosing
schedule required by claims 18 through 22.
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