Appeal No. 1995-1303
Application 08/004,603
Claims 1 through 7 stand rejected under 35 U.S.C. § 103(a). As evidence of
obviousness, the examiner relies upon Minaskanian, Rajadhyaksha and Francoeur. We
reverse.
Discussion
We initially note that the Examiner’s Answer is difficult to review since the
examiner refers us to Paper No. 8 for a statement of the rejection. However, Paper No.
8 indicates that the claims are rejected for “the reasons of record.” The only statement
of a rejection we find in the case is the first office action where the examiner states:
The instant compound, composition and use is generically taught by
Minaskanian et al. in column 2, line 30. The corresponding saturated compound
is taught by Rajadhyaksha in column 2, line 5. Francoeur et al. teaches the use
of compositions containing the compounds of the two primary references along
with various unsaturated acid[s], including oleic acid, as epithelial membrane
permeability enhancing agents. One skilled in the art would expect a compound
which shows the structure of oleic acid and the structure of the compounds of the
two primary references to possess similar epithelial membrane permeability
enhancing properties. The substitution of the oleic chain from oleic acid for the
corresponding saturated c18 alkyl group one [sic, on] the azocycloheptan-2-one of
the primary references would be expected to produce a compound with the
instant properties and use given the teaching of Rajadhyaksha. The combination
renders the instant claims prima facie obvious absent a showing of unexpected
properties.
The examiner’s position presupposes that it would have been obvious to focus
on the C18 derivatives of Rajadhyaksha or Minaskanian. However, that supposition is
open to question. The Examiner’s Answer was mailed September 9, 1994. The court
issued its opinion in In re Baird, 16 F.3d 380, 29 USPQ2d 1550 (Fed. Cir. 1994) in
January 1994. Therein, the court stated “the fact that a claimed compound may be
encompassed by a disclosed generic formula does not by itself render that compound
obvious. In re Jones, 958 F.2d 347, 350, 21 USPQ2d 1941, 1943 (Fed. Cir. 1992).”
Baird, 16 F.3d at 382, 29 USPQ2d at 1552. In light of this precedent, which issued
2
Page: Previous 1 2 3 4 5 Next
Last modified: November 3, 2007