Appeal No. 1997-1965
Application No. 08/466,482
First, that a claimed compound may be encompassed by a disclosed generic
formula does not by itself render that compound obvious. In re Baird, 16 F.3d 380, 382, 29
USPQ2d 1550, 1552 (Fed. Cir. 1994); In re Jones, 958 F.2d 347, 350, 21 USPQ2d 1941,
1943 (Fed. Cir. 1992). In Jones, the court specifically rejected the Commissioner’s
argument that “regardless of how broad, a disclosure of a chemical genus renders obvious
any species that happens to fall within it.” In re Jones, 958 F.2d at 350, 21 USPQ2d at
1943. Second, the examiner misapprehends the facts and distorts the record in referring to
compounds I and II as “the claimed compounds” (examiner’s answer, page 7). Compounds
I and II are an essential part of applicants’ pharmaceutical composition (claim 18) and
method for treating diseases characterized by excessive smooth muscle cell proliferation in
a mammal (claims 19 and 20), but the claims before us are not drawn to compounds per se.
Additionally, the examiner relies on Aikawa and Harsányi which are referenced at
page 2 of applicants’ specification. These patents disclose substituted benzimidazoles,
useful for treating diseases characterized by excessive smooth muscle cell proliferation in a
mammal. Specifically, Aikawa discloses antihyperlipidemia or aniarteriosclerosis agents
and Harsányi discloses a method for inhibiting atherosclerosis and thrombus formation, and
treating hyperlipoproteinemic diseases. The examiner argues that each primary reference
(Raeymaekers, Venkataratnam, Gevaert, and Beilstein) discloses substituted
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